WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Osama Javed

Case No. D2019-1625

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America.

The Respondent is Osama Javed, Canada.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <bmwnavupdate.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2019.

The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. Two informal email communication from the Respondent were received by the Center on July 15 and 17, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on August 12, 2019.

The Center appointed Olga Zalomiy as the sole panelist in this matter on August 21, 2019. 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 one of the most successful manufacturers of automobiles and motorcycles in the world. The Complainant offers navigation software as well as updates and activation codes for such updates, also known as FSC codes, through its authorized dealers.

The Complainant owns numerous registrations for its well-known BMW mark in many countries, including the following registrations:

- German registration No. 221388 for the mark BMW and Design, issued on December 10, 1917;
- German Registration No. 410579 for the mark BMW in block letters, issued on November 15, 1929;
- US Registration No. 611,710 for the mark BMW in block letters, issued on September 6, 1955;
- US Registration No. 613,465 for the mark BMW and Design, issued on October 4, 1955.

The Respondent registered the Domain Name on March 2, 2019. The Domain Name used to direct to a website offering for sale unauthorized, counterfeit versions of the Complainant’s navigation software and activation/FSC codes. In addition to the Respondent’s unauthorized use of the Complainant’s BMW mark in the Domain Name, the Respondent’s website displayed Complainant’s famous BMW word and design mark and used the BMW mark in the trade name “BMW Nav Update”. The Respondent also used the Complainant’s BMW mark on an unauthorized USB stick, on which the unauthorized software was provided. Currently, the Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be one of the most successful manufacturers of automobiles and motorcycles in the world. The Complainant states that it owns the well-known word, and word and design, BMW marks. The Complainant submits that in addition to other goods and services, it offers navigation software and systems under the BMW mark for its BMW automobiles. The Complainant asserts that it also offers navigation software updates and activation codes for such updates, also known as FSC codes, through its authorized dealers and on its “shopbmwusa.com” website, among other official BMW channels.

The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s BMW trademark because the Domain Name contains the Complainant’s famous BMW mark in its entirety. The Complainant argues that the addition of the descriptive terms, “update” and the abbreviation “nav” for “navigation”, does not distinguish the Domain Name from Complainant’s BMW mark. The Complainant asserts that the addition of such terms enhances the confusion because the terms relate to the Complainant’s business: the Complainant offers navigation software and updates for its software. The Complainant states that generic Top-Level Domains (“gTLD”), such as “.net” are irrelevant to confusing similarity analysis.

The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name for several reasons:

(i) the Respondent’s registration and use of the Domain Name for a commercial website advertising/offering unauthorized, counterfeit versions of the Complainant’s products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP;

(ii) the Respondent’s advertising/offering of unauthorized, counterfeit, products unfairly competes with the Complainant, which does not demonstrate any rights or legitimate interests in the Domain Name;

(iii) the Respondent’s unauthorized use of the Complainant’s famous and registered BMW Logo and the BMW mark in the trade name “BMW Nav Update”, its offering of unauthorized and counterfeit BMW products, and its unauthorized use of the Complainant’s images on the Respondent’s website constitute passing off, which demonstrates a lack of rights or legitimate interest under the UDRP;

(iv) the Respondent’s current passive holding of the Domain Name is not a use in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under the UDRP;

(v) the Respondent is not and has not been commonly known by the Domain Name.

The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name, the Respondent’s website, and the unauthorized, counterfeit products advertised/offered therein. The Complainant claims that the Respondent’s registration and use of the Domain Name also constitute bad faith because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the Domain Name to advertise/offer unauthorized, counterfeit, products that compete with the Complainant’s genuine products. The Complainant argues that the Respondent’s “passing off” activities constitute further evidence of its bad faith. The Complainant claims that the Respondent’s registration of the Domain Name after the adverse decision in a different UDRP case constitutes a bad-faith pattern under UDRP. In addition, the Complainant states that the Respondent’s current non-use or passive holding of the Domain Name constitutes evidence of the Respondent’s bad faith. Finally, the Complainant asserts that the Respondent’s registration of the Domain Name with knowledge of the Complainant’s trademark rights constitutes bad faith under the UDRP.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, in email communications with the Center, the Respondent states that he was asked by someone on BMW forums to buy two domain name names, one of which was the Domain Name. The Respondent contended that it sold one of the two domain names, ˂bmwsatnavupdates.com ˃, to a third party and offered to sell the Domain Name too.

6. Discussion and Findings

Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the BMW trademarks.

The Domain Name consists of the Complainant’s BMW trademark, the words “nav” and “update”, and the gTLD “.net”. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”¹ Because the BMW trademark is recognizable within the Domain Name, the Domain Name is confusingly similar to the Complainant’s trademarks. The addition of the terms “nav” and “update” does not prevent finding of confusing similarity. Because “[t]he applicable gTLD in a domain name … is viewed as a standard registration requirement, it is disregarded under the first element confusing similarity test”. For the aforementioned reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s BMW trademark and that the Complainant has satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent².

The following circumstances, in particular, but without limitation, if found by the panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

First, the Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. The Complainant claims that it did not authorize the Respondent to use the Complainant’s BMW trademarks in any manner. The Complainant contends that the Respondent’s registration and use of the Domain Name for a commercial website advertising/offering unauthorized, counterfeit versions of the Complainant’s products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP. In its informal response, the Respondent does not dispute that the software is counterfeit. It is well-established that advertising/offering unauthorized, counterfeit, and/or competing products does not demonstrate any rights or legitimate interests in the domain name at issue³.

Second, the Respondent’s unauthorized use of the Complainant’s famous BMW Logo, its unauthorized use of the Complainant’s BMW mark in the trade name “BMW Nav Update,” its offering of unauthorized, counterfeit BMW products, and its unauthorized use of the Complainant’s images on its website constitute passing off, in that the Respondent is trying to pass off its website as the Complainant’s website or affiliated with the Complainant. Passing off activities have been consistently held to demonstrate a lack of rights or legitimate interests under the UDRP⁴.

Third, evidence on file shows that the Respondent has not been commonly known by the Domain Name.

Fourth, the Respondent’s use of the Domain Name is not fair, because “it falsely suggests affiliation with the trademark owner”.⁵ The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name, which contains the Complainant’s well-known BMW trademark and the descriptive term “nav” and “update”, and used to direct to the website that offered unauthorized and/or counterfeit updates to the Complainant’s navigation software. The Respondent’s website contains no disclaimer of its relationship or lack thereof with the Complainant.

Fifth, the Respondent’s current non-use, or passive holding, of the Domain Name is further evidence that it does not have any rights or legitimate interest in the Domain Name. See, e.g., BMW v. Weiss ( WIPO Case No. D2017-2145) (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”)

The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.⁶ Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.⁷ Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

First, the Respondent’s registration and use of the Domain Name constitute bad faith under paragraph 4(b)(iv) of the Policy, because the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s well-known BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name, the Respondent’s website, and the unauthorized, counterfeit products advertised/offered therein. It is well‑established, that “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”⁸ Taken into account the Respondent’s use of the Domain Name for per se illegitimate activity, such as the sale of counterfeit goods, “such behavior is manifestly considered evidence of bad faith”⁹.

Second, the Respondent’s registration and use of the Domain Name constitute bad faith under paragraph 4(b)(iii) of the Policy, because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the Domain Name to advertise/offer unauthorized, counterfeit, products that compete with the Complainant’s genuine products. See e.g., BMW v. Codesoft Technologies, WIPO Case No. D2018‑1160 (“. . . the Respondent’s registration and use of the disputed domain name [<bmwcodesoft.com>] constitutes bad faith under paragraph 4(b)(iii) of the Policy because in using the disputed domain name to resolve to a website on which it is selling unauthorised or fake BMW marked products, the Respondent is disrupting the Complainant’s business and unfairly competing with the Complainant.”

Finally, the Panel finds that the Respondent’s current non-use or passive holding of the Domain Name constitutes evidence of the Respondent’s bad faith.¹⁰ The Respondent’s registration of the Domain Name incorporating the Complainant’s well-known trademark and its prior bad-faith use of the Domain Name make any good faith use of the Domain Name implausible.

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 Domain Name <bmwnavupdate.net> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: September 3, 2019

¹Section 1.7, WIPO Overview 3.0.

²Section 2.1, WIPO Overview 3.0.

³Section 2.13.1, WIPO Overview 3.0.

⁴Id.

⁵ See section 2.5.1, WIPO Overview 3.0.

⁶Section 2.1, WIPO Overview 3.0.

⁷Id.

⁸Section 3.1.4, WIPO Overview 3.0.

⁹Id.

¹⁰Section 3.3, WIPO Overview 3.0.