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Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works [2005] GENDND 1776 (20 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works

Case No. D2005-0941

1. The Parties

The Complainants are Bayerische Motoren Werke AG (hereafter BMW), and Sauber Motorsport AG (hereafter Sauber), of Germany, represented by BMW trademark counsel.

The Respondent is Petaluma Auto Works, of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <bmwsauberf1.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2005. On September 2, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 2, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 September 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2005. While no Response was received after October 2, 2005, the Respondent had filed email communications to the Center on September 6 and 7, 2005.

The Center appointed Jette Robsahm as the sole panelist in this matter on October 11, 2005. 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.

On October 5, 2005, the Complainant submitted a Supplemental Filing to the Center. In light of its conclusions set out below, the Panel has not found the need to address the admissibility and substance of such Supplemental Filing.

The language of the proceeding is English.

4. Factual Background

The first Complainant is the well-known German car manufacturer BMW AG. It holds many trade mark registrations all over the world, including the following German registrations:

Trademark: BMW and design

Country: Germany

Registration No. 221388

Reg. Date: December 10, 1917

Class: 12

Goods: Land, air, water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous operating supplies and their components and accessory parts.

Valid until: October 31, 2007

Trademark: BMW

Country: Germany

Registration No. 410579

Reg. Date: November 15, 1929

Class: 7, 12

Goods: Aircraft engines, land, air, water vehicles, motorcycles, internal combustion engines for solid, liquid and gaseous operating supplies and their components.

Valid until: February 28, 2009

From the complaint can be cited the following facts:

“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, such as motor racing, are also covered by various trademark registrations throughout the world.

The 2^nd Complainant, Sauber Motorsport AG, a Swiss motorsport racing team commonly known under the name “Sauber” after its founder Peter Sauber, has been in the Motorsport business for 35 years and has participated in the FIA Formula One World Championship since 1993.”

The second Complainant holds several trademark registrations, among which is Swiss trademark registration No. 511 206 – SAUBER MOTORSPORT and design, for a variety of goods and services, including Class 41 “sports and cultural activities, organization of competitions, collecting and enabling of information in the field of motor sports, also on the internet.” It is also the holder of Swiss trade mark Registration No. 399393 and International Registration No.599122, both for TEAM SAUBER and design for various goods. The first Complainant is a major shareholder in Sauber Motorsport AG.

Both Complainants have participated in Formula 1 racing for several years.

The first Complainant became aware of the Respondent on June 29, 2005 when it tried to register the domain name <bmwsauberf1.com> for itself. A letter was sent to the Respondent on the same day, requesting that further reference to trademarks owned by the Complainants be stopped and that the domain name be transferred to the first Complainant.

The Respondent which is situated in the US, is apparently a family owned car repair business. On the home page “www.datsunz.com”, one can read that they will be dedicated to the restoration of Z-cars.

The domain name <bmwsauberf1.com> relates to a website about Formula 1 racing.

The Respondent answered the letter from the Complainant by sending e-mails rejecting the Complainant’s requests.

5. Parties’ Contentions

A. Complainant

The Complainants allege that the disputed domain name was registered after rumors of a possible cooperation between the two Complainants and before the official message confirming it was published. Already in February 2005, the press had articles with speculations that BMW would form a new team with Sauber. In June, on the 22^nd, the official message was published that BMW had acquired a majority shareholding in Sauber. The disputed domain name was registered on June 11, 2005.

In Formula 1 racing, it is very common that the racing teams features the names of the constructors and/or sponsors involved. As examples can be mentioned Sauber Petronas, BAR Honda and McLaren Mercedes. It was therefore most likely that a new team of BMW and Sauber would be named BMW Sauber F1, and that the parties jointly would have an interest in acquiring and using the domain name <bmwsauberf1.com>.

During the preparation of the complaint, the 1^st Complainant found that the Respondent changed the website by entering a disclaimer stating that “this website is in no way affiliated with or sponsored by BMW or Sauber, and is not a source of anything having to do with either BMW or Sauber.”

The Complainants further state the domain name <bmwsauberf1.com> is identical or confusingly similar to the trademarks “BMW” and “Sauber”. “BMW” is a world famous mark and “Sauber” is a well-known mark in motorsport racing. The dominant and distinctive components of the disputed domain name are “BMW” and “Sauber”, which are identical to each of the Complainant’s trademarks. That the domain names are a combination of two marks owned separately by two owners does not mean that the Policy cannot be applied, see as an example Audi AG v. Hans Wolf, WIPO Case No. D2001-0148, a case involving the domain name <audi-lamborghini.com> in which the Lamborghini mark was owned by a subsidiary company of the Complainant, Audi AG.

The mark BMW, a well-known mark at the beginning of the domain name, will be understood as a reference to the first Complainant. Even if an Internet user does not know that Sauber has been acquired by BMW, he is likely to understand the addition of “Sauber” as a reference to some relationship or association between the respective companies. Users who are aware that BMW has acquired a majority shareholding in Sauber and are aware of the 2006 Formula One team involving the Complainants will even be more likely to connect the domain name with the Complainants’ activities. (See again the Panel’s similar findings in the above-cited Audi case.)

The addition of the component “F1”, known as an abbreviation for “Formula One”, in which the Complainants are involved, does not make the predominant elements “BMW” and “Sauber” less distinctive. In particular, because the Complainants are involved in F1 racing, the addition of “F1” to “BMW” and “Sauber” is even more likely to create confusion rather than alleviate any confusion. (See BellSouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807, concerning the domain <bellsouthpages.com>).

Finally, the ending “.com” is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.

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 an auto repair shop in Petaluma, California which specializes in Datsun Z cars. The Respondent is not a licensee of the Complainants’ marks and has not been authorized in any way to use the same.

Prior to receiving notice on June 29, 2005, the Respondent had used the domain name to point to a website which stated “Welcome to the home of bmwsauberf1.com” and promoted a third party trading under a “DirectAdmin” logo, an entity which is in no way related or authorized by the Complainants. Such use cannot be considered a bona fide offering of goods or services.

Further the Respondent, an auto repair shop specializing in the repair of Datsun Z cars, has not been commonly known by the domain name.

The Complainants submit that the Respondent added content to the website merely to appear to be making a legitimate or noncommercial fair use of the domain name by now acting as a fan of the BMW Sauber F1 team. Particularly, rather than responding to the Complainant’s by the deadline of July 21, 2005, as the Respondent promised to in the correspondence between the parties, the Respondent chose not to reply to the Complainants in time for the deadline but rather put up “fake” content on the website on the same day in an attempt to show fair use.

Respondent cannot claim legitimate noncommercial or fair use by creating or preparing to create an enthusiast site or any other site about the future BMW Sauber F1 team, since the Respondent has expressly stated that the site will not be the source of any information having to do with either BMW or Sauber.

Thus, by registering the domain name <bmwsauberf1.com>, the Respondent was speculating from the previous rumors in the press that BMW and Sauber would join forces in F1 racing and was hoping to capitalize on an actual partnership or affiliation between the 2 Complainant companies.

Such an opportunistic act disrupts the Complainants’ businesses by preventing it from using a domain name which would reflect their new name. (See Konica Corporation of Tokyo, Japan and Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. 2003-0112.) The Respondent, by stating in one of his emails “how do I know your not just trying to have me change the web address so you can use it?”, has implied that he does not want to allow the Complainants to use the domain name (or at least not without further compensation), thereby intentionally disrupting the activities of the Complainants.

WIPO jurisprudence has dealt with many similar situations, in particular regarding domains registered from the speculation about mergers, and has consistently found bad faith registration and use under para. 4(b) of the Policy. (For example, see Sanofi-Synthelabo v. Nicki On, WIPO Case D2003-0871; Pharmacia & Upjohn AB v. Monsantopharmacia.com.inc., WIPO Case No. D2000-0446; SMS Demag AG v. Seung Gon, Kim, WIPO Case No. D2000-1434). In particular, in the Konica case cited earlier, in which several such cases were summarized, the Panel stated that “all these cases show that opportunistic registration of the name or likely name of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use.” Such cases have found bad faith registration and use regardless of whether the name was held passively or not.

B. Respondent

The Respondent replied as follows to the Complainants after having received their first letter:

“I’m looking in the situation, however, until I learn more about this supposed conflict how do I know your not just trying to have me change the web address so you can use it? For this reason I must educate myself further on the rules and regulations of this matter, and rest assured I will respond by 21/07/05 – thank you.”

On July 1, 2005, another email was received by the 1^st Complainant, which stated:

“Until I learn more about the rules & regulations concerning this matter I cannot go through with your request, however 7-21-05 is plenty of time to educate myself further on this situation. Thank-you”

As no reply was received, the Complainants sent a reminder and received a reply email dated August 10 from the Respondent stating: “my reply is- this is my website and I’m not breaking any rules in the process, proceed as you like.”

After having received the complaint from the Complainant, the Respondent responded by two e-mails and claimed to be a BMW fan enthusiastic over the prospect of BMW and Sauber creating a racing team. The Respondent further admits to have seen the speculations in the media about a possible cooperation between BMW and Sauber and to have been excited about the idea of such a team. The domain name was purchased in this spirit.

The Respondent further states as follows:

“It was not in bad faith as they claim. I truly am a race fan, and find it quite shocking to read the packet BMW sent where they claim I put up fake content. I really should defend myself by putting up pictures of my trips to the U.S.G.P. in Indianapolis in 2004 & 2005” and ends by saying that no bad faith has been demonstrated and that no want for money is involved.”

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to convince the Panel of its rights and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

A. the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

B. the Respondent has no rights or legitimate interests in respect of the domain name, and

C. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided sufficient evidence of their rights to the trademarks BMW and SAUBER. Although the trademark registrations belonging to Sauber Motorsport AG consist of more elements that the word Sauber, those elements are partly descriptive, therefore leaving Sauber as the most phonetically distinctive element.

The domain name in question is <bmwsauberf1.com>, which is comprised of the trademarks BMW and SAUBER. The question is whether the combination of the two marks is apt to render the domain name distinctive enough to avoid confusion.

It is common trademark law practice to find that two trademarks are confusingly similar if one of them comprises the other in its entirety, especially if the comprised mark is distinctive or well established. In this case, the domain name comprises two marks which are quite well known in car racing circles, and there is therefore reason to believe that the domain name in question will be perceived to be related to at least one of the Complainants. The fact that the domain name comprises the element “f1” also fails to prevent confusion since both Complainants are known to be participants in Formula One races.

It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See as examples Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199.

On this background, it is the view of this Panel that the domain name <bmwsauberf1.com> is confusingly similar to the trademarks owned by the Complainants.

B. Rights or Legitimate Interests

None of the Complainants has ever licensed any right to the Respondent and the Respondent has therefore no rights in either of the two trademarks involved.

The question to be discussed is whether in the present context it is legitimate under the Policy to use well-known trademarks as part of a domain name linked to a site intended to be used by an eager Formula One fan. The Panel can understand that some people can be carried away in their enthusiasm and establish websites to honor their favorites. However, when having been notified that it is not in the interest of the favorite that their trademark is being used, a true enthusiast would probably comply and either cancel the domain name and close the website, or at least close the website.

It is absolutely possible to demonstrate enthusiasm on a website without using others’ trademarks as a domain name. It is for example not forbidden to mention BMW or Sauber in an article or a short notice when writing about a race or a team on a website, (see Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299).

It is thus difficult to see what legitimate interest the Respondent could claim to have in the domain name <bmwsauberf1.com> and the Panel is of the opinion that the Respondent has not given evidence to justify such legitimate interest name in the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the domain name before there was a formalized relationship between the two Complainants, and has admitted that rumors of a co-operation were the reason behind the registration. With the knowledge the Respondent allegedly possesses about car racing, it is obvious that it was well known to it that racing teams form their names by combining marks or company names. Examples are Sauber Petronas, BAR Honda and McLaren Mercedes.

By choosing the domain name <bmwsauberf1.com>, the Respondent hindered the Complainants in a legitimate and normal use of a team name as a domain name for a website.

The Respondent claims to have no economic interest connected to the use of the domain name As such, this does not justify the use of others’ trademarks as a domain name.

On this background the Panel concludes that the disputed domain name was registered and used in bad faith in the meaning of paragraph 4(a)(iii) of the Policy.

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, <bmwsauberf1.com> be transferred to the 1^st Complainant, BMW AG.

Jette Robsahm
Sole Panelist

Date: October 20, 2005