bmwx5.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Null

Case No: D2002-0937

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business at Petuelring 130, Munich, Germany, represented by Aimee Gessner, of Germany.

The Respondent is Null of Beverly Hills, California, United States of America.

The disputed domain name <bmwx5.com> is registered with Intercosmos Media Group d/b/a directNIC.com

The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on October 10, 2002. On October 10, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October 10, 2002, the Registrar, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details for the administrative contact. No information was given regarding the billing and technical contacts. The Registrar further informed the Center that the contact person for the organization "Null" was a Joe Smith. Although this email from the Registrar was dated October 9, 2002, it reached the Center on October 10, 2002. 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 (by email and courier), and the proceedings commenced on October 14, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 4, 2002.

Furthermore, it is noted that by e-mail of October 21, 2002, the Complainant informed the Center that the Complaint including annexes which had been sent to the Respondent via international courier had been returned to the Complainant as it was undeliverable. The address used on this special courier mailing was the one specified in the information confirmed by the registrar.

The Center appointed António L. De Sampaio as the sole panelist in this matter on November 11, 2002. 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 Complainant and the Respondent were notified of the appointment of the undersigned as sole panelist as the Administrative Panel (the "Panel") in this matter.

The Panel has not received any requests from Complainant or 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 proceedings have been conducted in English.

The Complainant, Bayerische Motoren Werke AG, for almost a century carries on business in the manufacture and distribution of motor vehicles.

The world famous and well-known marks "BMW" and "BMW (and design)" have been in use since as early as 1917 in Germany.

The Panel verified and confirmed that the Complainant is the mark owner of the German Mark Registration No. 221.388 "BMW (and design)", of December 10, 1917, for goods of International Class 12. This German Mark Registration is still in force.

The Panel verified and confirmed that the same Complainant is the mark owner of the German Mark Registration No. 410579 "BMW" (word mark) intend for goods of International Classes 7 and 12, dated November 15, 1929. This German Mark Registration is still in force.

In the normal course of the activities of a large industrial commercial enterprise, the Complainant grew and became a worldwide known corporation with its BMW marks registered in a very large number of countries worldwide.

The Panel verified and confirmed that the Complainant is the owner, in particular, of United Stated Mark Registrations as follows:

-No. S-12960 "BMW" (word mark) of September 10, 1993;
-No. 611710 "BMW" (word mark) of September 6, 1955;
-No. 1627241 "BMW" (word mark) of December 11, 1990;
-No. 1164922 "BMW" (word mark) of August 11, 1981;
-No. S-12961 "BMW (and design)"of September 10, 1993;
-No. 1450212 "BMW (and design)" of August 4, 1987

The Panel also verified and confirmed that the Complainant is the owner of the following Mark Registrations:

-Germany No. 39859573 "X5" (block letters) of November 26, 1998;
-European Community No. 977256 "X5" (block letters) of October 27, 2000;
-USA No. 2,484,353 "X5" (block letters) of September 4, 2001.

The Panel confirmed and verified that all the above mark registrations are protected for various International Classes including motor vehicles and their parts thereof.

The marks "BMW" and "X5" are registered marks and "well-known" worldwide.

In particular and considering the location of the residence of the Respondent the Complainant has duly proved that it is the owner of several mark registrations for "BMW" and for X5 in the United States of America.

The Complainant invokes that the "X5" mark is in fact a model designation for a successful BMW four-wheel sports activity vehicle in the market since at least 1999.

The full designation for said vehicle is BMWX5. In fact, print outs from the Complainant’s website at "http://www.bmw.com" show use by said Complainant of the name BMWX5.

As declared by the Complainant, the Respondent has never been entitled to use any of the Complainant’s marks. The Respondent’s use of the marks "BMW" and "X5" as well as of the name BMWX5 is, therefore, neither connected to, sponsored or authorized by, nor within the control of the Complainant.

The Complainant took the initiative to contact the Respondent, before these proceedings were initiated, specifically requesting that the Respondent should discontinue any use or reference to the Complainant’s marks and that the domain name in question <bmwx5.com> be transferred to the Complainant.

Furthermore, the Complainant declares that after his special request the host provider

DirectNIC shut down the website at <bmwx5.com> .

Finally, the Complainant informs that at the date of submission of the Complaint the Respondent has failed to respond and has shown no willingness to comply with the Complainant’s request for a transfer of the domain name <bmwx5.com>.

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

At the time this decision is being taken, the Panel has not received any late Response or any other kind of reaction from the Respondent.

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), aims to resolve disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the Respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") establish procedures intended to assure that Respondent is given adequate notice of proceedings commenced against him, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In the present case all the requirements were fully met. The brief of the Complainant was filed according to the Rules. The Panel acknowledges that the Respondent was duly notified as foreseen in the Rules. However, no Response was filed and the Notification of Respondent’s default was also correctly issued.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain the requested relief. These elements are:

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

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

(C) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief.

Let us consider the applicability, in detail, of what is stated in paragraph 4 (a) of the Policy.

The domain name in question <bmwx5.com> is composed exactly of two marks that are mark registrations of the Complainant, which are, "BMW" and "X5".

In the present context, this combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark.

Therefore, the domain name <bmwx5.com> is identical to the mark registrations of the Complainant, namely German mark registrations, United Sates mark registrations and an European Union mark registration.

The evidence of ownership by the Complainant for the above referenced mark registrations is duly acknowledged.

In fact, we are before a case of first degree identity and confusingly similarity.

Furthermore, the domain name <bmwx5.com>, where the expression ".com" has no significance in the context, corresponds exactly to the name of the model designation of a vehicle sold by the Complainant.

The silence of the Respondent might be an indication that he has no rights or legitimate interests in respect of the domain name <bmwx5.com>.

On the other hand, such silence linked to the fact that both mark registrations "BMW" and "X5" of the Complainant are "well-known" marks worldwide prevent the Respondent from invoking any rights or legitimate interests.

The Panel, lacking of other information or Response, also considers that the identification name of the Respondent (Null) does not establish any rights or legitimate interests to the Respondent as regards the domain name <bmwx5.com> .

For a complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Even if the Respondent has not responded to the complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

In this case, the registration of the domain name in bad faith may be ascertained from the fact that the Respondent could not be ignorant of the existence of the well-known mark BMW. In addition, the combination of the registered marks "BMW" and "X5", both marks of the Complainant, shows that the Respondent is aware of the well-known reality of both marks.

The use of the domain name in bad faith may be ascertained from the fact that the Respondent has given false information as regards his contact details including its indicated telephone number which is not plausible as there is no 555 telephone area code in the USA.

Moreover, the mailing address is apparently erroneous as some mailed correspondence was returned to the sender.

All these aspects create a dubious context which the Panel concludes as a bad faith action.

But even more relevant is the fact that the Panel finds that the registration and the use of the domain name <bmwx5.com> by the Respondent should be considered as intentionally attempting to attract for commercial gain, Internet users to the website by unlawfully creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service of the website or location, in the terms of paragraph 4 (b)(iv) of the Policy.

Last but not the least, the domain name <bmwx5.com> of the Respondent was connected to the pornographic website "http://www.ponro.com", which is a commercial activity with specific objectives to which the Complainant does not permit to be associated with.

In fact the reputed commercial activity of the Complainant will be severely damaged by the use of the domain name <bmwx5.com> through the unauthorized association with degrading material such as graphical sexual images and hard pornography causing dilution and tarnishment of the Complainant’s mark rights.

The Panel recognises that Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use, and that the domain name <bmwx5.com> was obtained in bad faith.

As the basic principles of law of all the juridical reasoning of the above discussion and findings a reference should be made to article 6 bis (1) [well-known marks] and article 10 bis (2) and (3) [unfair competition] both of the Paris Convention for the Protection of Industrial Property of 1883, both entirely applicable to this case.

Still two further references entirely applicable in the context:

i) The "Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks" adopted in 1999 by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization WIPO.

ii) The "Joint Recommendation Concerning Provisions on the Protection of Marks and Other Industrial Property Rights in Signs on the Internet", adopted in 2001 by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization WIPO.

The Panel decides that the Complainant has proven each of the three elements of paragraph 4 (a) of the Policy. The domain name in dispute and registered by the Respondent is confusingly similar to the mark registrations of the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent’s domain name has been registered and is being used in bad faith.

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 <bmwx5.com> be transferred to the Complainant.