DECISION

Bayerische Motoren Werke AG v. Bavarian AG

Claim Number: FA0204000110830

PARTIES

Complainant is Bayerische Motoren Werke AG, Munich, GERMANY (“Complainant”) represented by Stacey H. King, of Howrey Simon Arnold & White, LLP.  Respondent is Bavarian AG, Kansas City, MO (“Respondent”) represented by Michael Kaplan.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bmwkc.com> and <kansascitybmw.com>, registered with Network Solutions, Inc.

PANEL

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

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On May 2, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <bmwkc.com> and <kansascitybmw.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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@bmwkc.com and postmaster@kansascitybmw.com by e-mail.

A timely Response was received and determined to be complete on May 21, 2002.

On June 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that the contested domain names are confusingly similar to its famous trademark BMW; that the Respondent is not an authorized BMW dealer and therefore has no right to use the contested domain names; that the Respondent is not using the domain names in connection with a bona fide offering of goods or services; and that the Respondent acted in bad faith as it is using the contested domain names to intentionally attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with BMW as the source, sponsorship, affiliation, or endorsement of its web site.

B. Respondent

Respondent alleges that it is in the business of selling used BMW automobiles; and that it "intended no harm or confusion and would relinquish its rights to these domain names if it were reimbursed for its expense".

FINDINGS

The Complainant is the famous multi-national corporation, organized under the laws of Germany, that manufactures, distributes, and markets various models of automobiles and other products around the world under the trademark BMW and variations thereof.

The Complainant has continuously used the trademark BMW since 1917 and owns registered trademarks registered as early as 1917 and as recently as 1990.

The mark BMW is a famous mark around the world.

The Respondent is in the business of selling used BMW automobiles.

The disputed domain names are routed to the web site <bavarianag.com>, which offers used BMW automobiles for sale.

The Respondent is prepared to transfer the contested domain names to the Complainant in exchange for reimbursement of its out-of-pocket costs, namely a fee of US $ 500.00 for the 10-year reservation for the names that it acquired in January 2001.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

The contested domain names contain the Complainant's trademark BMW combined with the geographic terms "Kansas City" or its acronym "KC".

According to the Complainant, "it is well settled under UDRP decisions that incorporation of a famous trademark into a domain name together with geographic terms" satisfies the UDRP requirement with respect to confusing similarity.  The Complainant cites Bloomberg L.P. v. Hans Global Co., FA 96570 (Nat. Arb. Forum Mar. 15, 2001) and Telstra Corp. v. Ozurls, D2001-0046 (WIPO Mar. 20, 2001).

Respondent does not contest that the disputed domain names are confusingly similar to the Complainant's trademark.

Rights or Legitimate Interests

Complainant asserts that Respondent has not met the requirements of paragraphs 4(c)(i) and (iii) of the Policy because Respondent uses Complainant’s BMW mark, without a license or authorization, to route Internet users to its web site <bavarianag.com> for commercial benefit.  The Respondent offers used BMW automobiles for sale at that site.

Complainant argues that Respondent is not using the domain names "in connection with a bona fide offering of goods or services" because the Respondent is not a licensed BMW dealer.  Therefore, according to the Respondent, the Complaint's use of the trademark BMW cannot be legitimate.

While it may be the case that the Respondent's use of the disputed trademark might violate US (or other) trademark law, the Complainant has not presented either evidence or arguments to this effect.  It arguments are limited to the statement made above.

It is not obvious to this Panel that the use of the trademark BMW combined with a geographical term to route Internet users to a web site that very clearly indicates that

· it offers used BMW automobiles for sale and

· it is not an official BMW dealership,

is in any way illegitimate.

Furthermore, on the basis of the evidence presented, it is not obvious to this Panel that the Respondent violates paragraph 4(c)(iii) of the Policy, because Complainant has not presented any evidence to the effect that the Respondent has an intent to "misleadingly divert customers" or to "tarnish the trademark".  Presumably the trademark is not tarnished by the mere offer to sell used automobiles.

The Complainant has argued that customers are misled or confused when they are routed to the Respondent's site, because the Respondent is not an authorized BMW dealer.  But the Respondent has not presented any evidence to the effect that Internet users automatically associate a domain name that combines the mark BMW with a geographic term with an authorized BMW dealer.  Furthermore, the Respondent's site is very clear with respect to the nature of its business, so, prima facie, it would appear to this Panel that confusion is unlikely.

The Panel notes that under paragraph 4(a) of the Policy, the burden of proof rests with the Complainant.

The Complainant cites Volkswagen of Am., Inc. v. Site Design Online FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (<bayareavw.com>).  But that case must be distinguished from the present case, because there was no Response in that case.  In the absence of a Response, the Panel is entitled, in accordance with Paragraph 14(b) of the Rules, to draw such inferences as it considers appropriate from the failure to respond.  That is, in the absence of a Response, the Panel is free to make inferences from the very failure to respond and thus to assign greater weight to certain circumstances than it might otherwise do.  In the present case, there has been a Response and the Panel must take into account the Respondent's contention that offering used BMW automobiles for sale at its web site is a legitimate use of the contested domain names.

The Panel holds that the Complainant has not proven that the Respondent has no legitimate interest in respect of the contested domain names.

Registration and Use in Bad Faith

The Complainant argues that the Respondent has acted in bad faith "because its use of the contested domain names is likely causing confusion, and deceptively leading customers to believe that Respondent is affiliated in some way with BMW when this is not in fact the case".  According to the Complainant, this use is causing damage to it.

Respondent has stated that it had no intention of creating harm or confusion, and has offered to relinquish the disputed domain names in exchange for reimbursement of its out-of-pocket costs.  This offer to relinquish the disputed domain name would appear to this Panel, prima facie, to indicate that the Respondent is not acting in bad faith.

As noted above, the Complainant has not presented any evidence to support its contentions of confusion, deception, or damages.

As noted above, the burden of proof rests with the Complainant.

The Complainant cites Bloomberg L.P. v. Cohen, FA 96600 (Nat. Arb. Forum Feb. 19, 2001), but that case must be distinguished from the present case, because in that case the Panel explicitly found, on the basis of the evidence presented, that the Respondent "registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name".  As noted above, the Panel finds that in the present case the Complainant has not satisfied its burden of proof, so the cited case is not applicable.

The Complainant also cites Volkswagen of Am., Inc. v. Site Design Online FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (<bayareavw.com>) and Victoria's Secret v. Atchinson Investments LTD FA 96496 (Nat. Arb. Forum Feb. 27, 2001).  There was no Response in the cited cases.  As noted above, the lack of Response distinguishes them from the present case.

The Panel holds that the Complainant has not proven that the Respondent has acted in bad faith.

DECISION

For the above reasons, the Complaint is denied.

Richard Hill, Panelist
Dated:17 June 2002

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