DECISION

Bayerische Motoren Werke AG v. Kerry Downs

Claim Number: FA0202000104571

PARTIES

Complainant is Bayerische Motoren Werke AG, Munich, GERMANY (“Complainant”) represented by Stacey H. King, of Howrey, Simon, Arnold & White, LLP.  Respondent is Kerry Downs, Hemlock, WI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bmwmodels.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 7, 2002; the Forum received a hard copy of the Complaint on February 8, 2002.

On February 11, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <bmwmodels.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bmwmodels.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant is a famous, multi-national corporation organized under the laws of the Federal Republic of Germany.  Complainant manufactures, distributes and markets various models of motor vehicles and other products throughout the United States and the world.

2. Since at least as early as 1917, Complainant has continuously used the trademark BMW in commerce to manufacture, sell, distribute and market various models of motor vehicles in Germany. 

3. Since at least as early as 1949, Complainant has continuously used the trademark BMW in commerce to manufacture, sell, distribute and market motor vehicles worldwide.

4. The domain name at issue is not the name of Respondent, nor can it be considered its business name or common trade name.

5. Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use the BMW marks for any purpose.

6. There is no legitimate basis for Respondent’s registration and use of the <bmwmodels.com> domain name.

7. The use of domain names containing famous marks to route to web sites containing adult content is not a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). 

8. Respondent’s acts constitute bad faith under Policy ¶ 4(b)(iv) as Respondent is using the domain name <bmwmodels.com> to intentionally attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its web site.

B. Respondent

No Response was received. 

FINDINGS

1. Complainant owns all rights in and to the trademarks BMW, BMW and Design, and BMW MPOWER (collectively “the BMW marks”) and has obtained the following trademark registrations, among others:

Trademark	Country of Registration	Registration Number	Registration Date
BMW and Design	Germany	221388	Dec. 10, 1917
BMW	Germany	410579	Nov. 15, 1929
BMW	United States	611710	Sept. 6, 1955
BMW and Design	United States	613465	Oct. 4, 1955
BMW and Design	United States	1170556	Sept. 22, 1981
BMW and Design	United States	1450212	Aug. 4, 1987
BMW MPOWER	United States	1494126	Jun. 28, 1988
BMW	United States	1627241	Dec. 11, 1990

                                                                                                  

2. These registrations are valid, subsisting, and in full force and effect.  United States’ registrations numbers 611,710, 613,465, 1,170,556, 1,450,212, and 1,494,126 are incontestable under U.S. law, 15 U.S.C. § 1065. 

3. Respondent registered the domain name <bmwmodels.com> with Domain Direct on February 8, 2000.

4. On February 5, 2002, the website <bmwmodels.com> routed to a home page for BMWMODELS.COM with the headline that read, “ABSOLUTELY THE BEST BMWMODELS ON THE WEB.” 

5. The home page for <bmwmodels.com> provides links to the various adult-content goods and services offered to consumers at the web site. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has rights to the BMW mark due to the extensive use and registrations throughout the world.  Respondent’s domain name is composed of Complainant’s BMW mark with the generic term “models.”  Such a domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Victoria's Secret v. Model a/k/a Learmont, FA 96553 (Nat. Arb. Forum Mar. 2, 2001) (finding that the addition of the term ‘models’ or ‘lingeriemodels’ to Complainant’s mark did not reduce the likelihood of confusion under Policy ¶ 4(a)(i)).

The Panel finds that the domain name is confusingly similar to Complainant’s BMW mark, and that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  It is well established that when a Respondent fails to submit a Response, a Panel may take all of Complainant’s allegations as true.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Furthermore, there is a presumption that a Respondent has no rights or legitimate

interest in a disputed domain name when it fails to submit a Response.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent’s use of the <bmwmodels.com> domain name to redirect Internet users to websites offering pornographic material permits a finding that Respondent has no rights or legitimate interests in respect to the disputed domain name.  See Nat’l Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, which is bad faith under Policy ¶ 4(b)(iv).  The posted pornographic material is evidence of bad faith when the domain name being used is confusingly similar a to a famous mark.  See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a pornographic depiction confusingly similar to Complainant’s registered trademark on its website that would cause confusion as to the source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Therefore, the Panel concludes that Complainant has met the burden set forth under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <bmwmodels.com> domain name be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: March 21, 2002

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