WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Gary Portillo
Case No. D2012-1937
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America ("US").
The Respondent is Gary Portillo of Rockville, Maryland, US.
2. The Domain Names and Registrar
The disputed domain names <rockvilleaudibmw.com>, <rockvillebmw.com>, <rockvillebmwmini.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 26, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 5, 2012. 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.
4. Factual Background
The Complainant is a corporation organized under the laws of the Federal Republic of Germany and manufactures and sells an array of automobiles (regular and hybrid), and motorcycles, as well as parts for such vehicles. The Complainant has 24 manufacturing facilities in 13 countries (including the US where the Respondent is located) around the world, and has 3,000 authorized dealers in more than 140 countries worldwide.
The Complainant owns numerous trademark registrations for BMW, in use since 1917 and has been ranked number 15 among the top 100 brands and valued at more than USD 24 billion by Interbrand in 2011. In addition the Complainant also owns trademark rights for MINI.
The disputed domain names <rockvilleaudibmw.com>, <rockvillebmw.com>, <rockvillebmwmini.com> were registered by the Respondent between March and May 2011.
5. Parties' Contentions
A. Complainant
The Complainant contends the following:
The disputed domain names are confusingly similar to the Complainant's trademarks. The addition of the generic terms to the Complainant's trademark BMW does not take away the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent's registration and use of the disputed domain names for pay-per-click websites featuring sponsored-link advertisements for various websites including directly competing websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP.
The Respondent is not commonly known by the disputed domain names, nor has it been authorized by the Complainant to use its trademarks.
The Respondent is using the Complainant's trademarks to capitalize on the fame of the Complainant's trademarks through generating pay-per-click revenue from sponsorships and advertisement on its websites.
Finally, the Complainant states that the Respondent had knowledge of Complainant's rights in the BMW mark when he registered the disputed domain names given the fame of Complainant's BMW and MINI trademarks.
It adds that the Respondent works in the automobile industry. Thus, by registering the disputed domain names with knowledge of the Complainant's rights in its BMW and MINI trademarks, the Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner's rights has been consistently found to constitute bad faith under the UDRP.
The Complainant request as a remedy the transfer of the domain names <rockvillebmwmini.com> and <rockvillebmw.com> and the cancellation of the domain name <rockvilleaudibmw.com>.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail, the Complainant must prove the following under the Policy, paragraph 4(a)(i-iii):
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names: and
- The disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds it indisputable that the Complainant has trademark rights in BMW and MINI as evidenced by the trademarks registrations.
Also, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks BMW and MINI.
The mere addition of the geographic term "Rockville" to all three disputed domain names does not negate the confusing similarity, neither the addition of the third party trademark AUDI to one of the disputed domain names.
Paragraph 4(a)(i) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain names:
(i) the Respondent used or demonstrably prepared to use the disputed domain names or corresponding names in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if it has not acquired trademark rights: or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.
In a UDRP proceeding, once the complainant makes a prima facie case that the respondent has no rights or legitimate interests, the burden of production shifts to the respondent to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests. The Panel is convinced that the complainant has made such prima facie showing.
The Respondent failed to demonstrate any rights or legitimate interests in the disputed domain names.
Paragraph 4(a)(ii) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name: or
(ii) you have registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that you have engaged in a pattern of such conduct: or
iii) you have registered the domain names primarily for the purpose of disrupting the business of a competitor: or
(iv) by using the domain names, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
It is undisputed that the Complainant is known worldwide and that the Respondent must have had knowledge of the Complainant's trademark rights in BMW and MINIat the time of registration of the disputed domain names (See Bayerische Motoren Werke AG v. RC a/k/a Sami Salem, WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Kang M., WIPO Case No. D2011-1086 and Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898).
In addition the following circumstances are taken into account by the Panel to conclude that there is evidence of bad faith registration and use:
- The Respondent registered around the same date the three disputed domain names, all of them containing trademarks of the Complainant, including BMW and MINI;
- One of the disputed domain name contains also the third party trademark AUDI, a term that happens to be another well-known trademark for cars;
- Moreover, the fact that the three disputed domain names includes terms that infringe on the Complainant's trademarks BMW or MINI supports a finding of bad faith registration and use;
- According to the Complainant, the Respondent is an active officer of Montrose Automotive Services LLC, a company involved in auto repair business. The Respondent has not denied the Complainant assertions that the Respondent works in the automobile industry, and thus this creates another sign of bad faith.
- Further, the disputed domain names registered by the Respondent are displaying sponsored links to competitors' web pages, such as Citroen or Audi. Thus, by the registration and use of the disputed domain names, the Respondent, has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names.
It is the view of the Panel, that all these clearly amounts to bad faith registration and use in accordance with the Policy.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <rockvillebmwmini.com> and <rockvillebmw.com> be transferred to the Complainant and the disputed domain name <rockvilleaudibmw.com> be cancelled.
Pablo A. Palazzi
Sole Panelist