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Bayerische Motoren Werke AG v. Ivan Razin [2005] GENDND 776 (18 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Ivan Razin

Case No. D2005-0341

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented by Aimee Gessner, BMW AG, Germany.

The Respondent is Ivan Razin, Berlin, Germany.

2. The Domain Name and Registrar

The disputed domain name <bmwcash.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2005 and on April 6, 2005 as a hardcopy version. On April 4, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 5, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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. Furthermore, the Registrar confirmed that the domain name at issue will be locked during the pending administrative procedure. 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 April 7, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2005.

The Center appointed Christian Schalk as the sole panelist in this matter on May 4, 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with Paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The date scheduled for issuance of the Panel’s decision is May 18, 2005.

The language of the proceedings is English.

4. Factual Background

The Complainant in this administrative proceeding, Bayerische Motorenwerke AG, is more commonly known as BMW AG. The Complainant carries on business in the manufacture and distribution of motor vehicles. The Complainant is owner of registrations of BMW as a wordmark and word and design mark in 120 countries worldwide and in particular of the following registrations:

- German Trademark Registration No. 221388, registration date December 10, 1917, for BMW and design, covering goods and services in Intl. Class 12;

- German Trademark Registration No. 410579, registration date November 15, 1929, for BMW, covering goods and services in Intl. Classes 7 and 12.

In addition to the goods and services covered by the above mentioned trademark registrations, the BMW trademark is currently used in relation to a wide variety of goods, including various accessories and merchandise, such as clothing, watches, sunglasses and leather goods. Furthermore, services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, other kind of banking services and financial services and participation and sponsorship of sporting events, are also covered by various trademark registrations.

The Complainant, its subsidiaries, importers, dealers, and licensees have used the BMW trademarks throughout the world for more than 80 years directly and through appropriate licenses and permission.

The domain name <bmwcash.com> has been registered by the Respondent on September 9, 2004, without any authorization issued by the Complainant.

The Complainant became aware about the registration of the disputed domain name by the Respondent on January 10, 2005, after receipt of an email by a Complainant’s customer who had complained to the Complainant’s customer service about the abuse of the Complainant’s trademarks on the website “www.bmwcash.com” for the promotion of adult entertainment services.

The domain name at issue was at least until March 30, 2005, also connected to a website offering a partnership scheme for generating income from toolbar downloads. This website also contained advertising and links to partner websites, including websites featuring pornographic material.

Furthermore, it featured the Complainant’s logo and the Complainant’s wordmark as well as several pictures of Complainant’s products. On the left side of the footer on each page of the website the remark “Copyright © 2004 bmwcash.com / “All rights ignored” was put.

A check of the Whois details on the same day revealed that the disputed domain name was registered by the Respondent who was also listed as the administrative and technical contact.

On January 11, 2005, the Complainant advised the Respondent by letter sent via post to the Respondent’s address mentioned in the Whois record of the disputed domain name, that the unauthorized use of the Complainant’s trademark in connection with the domain name at issue violated its trademark rights. In this letter, the Complainant asked the Respondent also to discontinue further use or reference to any Complainant’s trademark and to transfer the domain name at issue to the Complainant.

On January 26, 2005, the letter was returned to the Complainant by the German postal service Deutsche Post AG since it could not be delivered to the Respondent under the address mentioned in the Whois record of the disputed domain name. A street map search carried out by the Complainant on the website “www.berlin.de” revealed that the street mentioned in the Whois record does not exist.

On January 31, 2005, the Complainant scanned the letter mentioned above and sent it to the Respondent’s email address mentioned in the Whois record of the disputed domain name. The Respondent did not show any reaction to this email.

5. Parties’ Contentions

A. Complainant

The Complainant believes that domain name at issue is identical or confusingly similar to the Complainant’s trademark. The Complainant alleges that the letters “bmw” are the dominant and distinctive element of the disputed domain name, which is identical with the Complainant’s trademarks. The addition of the generic word “cash” does not make the predominant element “BMW” less distinctive. In this context the Complainant refers to Toyota France and Toyota Jidosha K.K.d/b/a v. Computer-Brain, WIPO Case No. D2002-0002, in which the Panel ruled that the domain name <toyota-occasions.com> is substantially identical to and confusingly similar to the trademark “TOYOTA”.

The Complainant further states that the Complainant is also offering financial services under the trademark “BMW”. Therefore, the Complainant concludes that it is even more likely that the domain name at issue will create confusion as opposed to alleviating any confusion. In this context the Complainant refers to Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807, with respect to the domain name <bellsouthpages.com>.

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

The Complainant also believes that the Respondent has no rights or legitimate interests in respect of the domain name at issue since the Respondent is not a licensee of the Complainant’s trademarks and has not been authorized in any way to use the same. The Complainant concludes therefore, that the Respondent has made no legitimate non-commercial or fair use of the domain name.

The Complainant believes further that the Respondent registered and uses the disputed domain name in bad faith. The Complainant submits that the Respondent meets the criteria outlined under Paragraph 4(b)(iv) of the Policy since he offered under the website accessible via the disputed domain name a partnership scheme for generating income from toolbar downloads. This website contained also advertising and links of partner websites, including websites featuring pornographic material. Such websites are financed with revenue from the websites that are promoted and the Complainant therefore concludes that the domain name at issue is used in a commercial manner.

The Complainant contends also that the Respondent is using a false registration data in an attempt to avoid liability for its misuse of the disputed domain name. The Complainant is of the opinion that this should be taken as an inference of bad faith within the meaning of Paragraph 4(b) of the Policy. In support to his reasoning the Complainant refers to Nintendo of Am. v. Lipson, WIPO Case No. D2000-1121, Molinari Int’l v. Lasambucamolinari.com, WIPO Case No. D2000-1169, and TTT Moneycorp v. Diverse Communications, WIPO Case No. D2001-0725.

The Complaint further alleges, that the Respondent was well aware that his registration and use of the disputed domain name constitutes an infringement of the Complainant’s trademarks since he puts the remark “All rights ignored” on his website. The Complainant asserts that this behavior and the fact the contact information was not accidentally wrong, but deliberately chosen to hide the identity of the Respondent and to avoid being held responsible for his registration of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (Paragraph 15(a) of the Rules). Pursuant to Paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B) The domain name holder has no “rights or legitimate interests in respect of the domain name”; and

C) The domain “has been registered and is being used in bad faith.”

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (Paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-0001).

A. Identical or Confusingly Similar

a) The Panel finds that the Complainant has established that it has trademark rights in the word mark BMW and in BMW as a word and design mark. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant’s trademarks.

b) However, the Panel finds the disputed domain name to be confusingly similar with the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807, for the domain name <bellsouthpages.com>; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550, for the domain names <bellsouthbenefit.com>, <bellsouthchatroom.com>, <contactbellsouth.com>; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819, among others for the domain name <canoncopymachines.com>; Aventis, Aventis Pharma SA. v. John Smith, WIPO Cases No. D2004-0565 and D2004-0624, with further references, for the domain names <aventislottery.org> and <aventisfoundationlottery.com>; Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002, for the domain name <toyota-occasions.com>.) Also in this case would the mere addition of the word “cash” not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademark. The word “cash” is a generic term in English for English speaking people but also for citizens of other countries such as Germany where “cash” is frequently used in public publicity in the same context it is used in English speaking countries. Furthermore, due to the fact that the Complainant is also offering financial services under its BMW – trademark (BMW Bank, “www.bmwbank.de”) it is likely that the disputed domain name could be understood by Internet users finding <bmwcash.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and therewith increase the likelihood of confusion (See also Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, for the domain names <philipsdealer.com/.net> and Koninklijke Philips Electronics N.V. v. Jaaska (or Jäaskä) Kaketti, WIPO Case No. D2001-0231, for the domain name <philipsdigital.com>) since such normal consumers may relate the word “cash” to financial services as well (See Bayerische Motorenwerke AG v. bmwcar.com, WIPO case No. D2002-0615; Bayerische Motorenwerke AG v. Lucjan Niemiec, WIPO case No. D2003-0240).

B. Rights or Legitimate Interests

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

a) The Respondent has not provided any evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The disputed domain name is fairly unique and specific to the Complainant. There is no connection between the domain name at issue and the toolbar downloads and the pornographic websites to which the websites provides links and there is also no other justification for the Respondent’s registration and use of the disputed domain name. The Panel believes further that the Respondent has chosen the contested domain name to profit by its fame and by the traffic generated by the likely initial expectations of users to whom he offers its services, a partnership scheme for generating income from toolbar downloads and access to services of pornographic nature (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; Charles Schwab & Co., Inc. v. Polanski, WIPO Case No. D2001-0959).

b) The Complainant has also not authorised the Respondent to use its trademark nor to register the disputed domain name. Furthermore, there is also no evidence that the Respondent is known by the domain name at issue.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the domain name in bad faith in violation of the Policy, Paragraph 4(a)(iii). The Policy Paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:

1) Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

2) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with Paragraph 4(b)(iv) of the Policy for the following reasons:

a) It is a well-established principle under prior UDRP decisions (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. In this case the Panel believes that the Respondent must have been aware of the Complainant’s trademark when he registered the disputed domain name. The Panel shares the Panelist view in the BMW AG v. Loophole, WIPO Case No. D2000-1156, that the BMW trademark is well known throughout the world and especially in the country, where the Respondent pretends to live. Furthermore, the Respondent displayed the Complainant’s trademarks and logos in a prominent way on his website. Another evidence is the fact that the Respondent writes on the left side of the footer on each page of his website that “all rights [are] ignored”.

b) The Respondent also attempts to take commercial benefit from his website since it is his aim that customers will invest money in the services he is offering on his website.

Furthermore, the disputed domain name misleads customers concerning the true nature of the Respondent’s website. The Complainant is offering banking services in order to finance customers the purchase of the Complainant’s products. Customers therefore expect information on such services under the domain name at issue. The Respondent’s websites which display the Complainant’s trademarks and products in a prominent way let customers believe that the Respondent is somehow linked with the Complainant or that the Complainant supports somehow- or has at least no objections against the Respondent’s activities. In the absence of any reply of the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent in that manner.

c) It is also established under prior UDRP decisions that whatever motivation of the Respondent, the fact that the disputed domain name is directed to a pornographic website can be also an indication that the domain name at issue has been registered and used in bad faith (See for example, Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotel & Resort, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0822).

The redirection of the disputed domain names to a pornographic website may frustrate potential customers seeking information about the Complainant’s services when they type in the domain name at issue. The consequences can be damaging for the Complainant since customers may refrain from searching for the Complainant’s goods and services and probably look for the corresponding services of the Complainant’s competitors.

d) Moreover, the Respondent has actively provided inaccurate contact details when it registered the domain name at issue or failed to correct false contact details. The Complainant used the contact details given in the WHOIS information for the disputed domain name when it tried to contact the Respondent. However, the letter was returned because it could not be delivered. Furthermore, the Complainant’s searches on the “berlin.de” - website of the city of Berlin revealed that the road in which the Respondent pretends to live does not exist. Therefore, the Panel finds that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and may have acted so to frustrate or at least to delay any attempts to transfer the disputed domain name to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(b)(iv) of the Policy and 15 of the Rules, the Panel orders that the domain name <bmwcash.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: May 18, 2005