WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Yulianto Yulianto

Case No. D2020-3180

1. The Parties

Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).

Respondent is Yulianto Yulianto, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <bmwgroup.website> (the “Domain Name”) is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 6, 2021. 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

Complainant, headquartered in Germany, and a part of the BMW Group, manufactures automobiles and motorcycles globally. Complainant’s products and components are manufactured at 31 sites in 15 countries on four continents, and it has more than 133,000 employees worldwide. Complainant also has a network of authorized dealers that are utilized to market both new and certified pre-owned BMW vehicles, as well as vehicle parts and accessories, and other products as well as services such as maintenance, repair, rental, and financing services. Currently, Complainant has approximately 3,500 authorized BMW dealers in locations throughout the world, including Indonesia. In 2019, BMW had worldwide sales and revenue in excess of EUR 104 billion. In prior years, BMW’s sales were also in the billions, with revenues of more than EUR 96 billion in 2018, more than EUR 98 billion in 2017, and more than EUR 94 billion in 2016.

Complainant owns the trademark, service mark, and trade name BMW. Under its BMW mark, Complainant manufactures, sells, and, distributes an array of automobiles and motorcycles, and provides numerous services. Complainant also uses and licenses its BMW mark on a wide variety of automobile and motorcycle parts and accessories and numerous related products.

Complainant has continuously used BMW as a trademark and service mark since 1917, and owns numerous registrations for the BMW mark and variations thereof in more than 140 countries around the world, including:

a. German trademark registration No. 221388 for the mark BMW and Design, registered on December 10, 1917;
b. German trademark registration No. 410579 for the mark BMW in block letters, registered on November 15, 1929;
c. United States trademark registration No. 0611710 for the mark BMW in block letters, registered on September 6, 1955;
d. United States trademark registration No. 0613465 for the mark BMW and Design, registered on October 4, 1955;
e. Indonesian trademark registration No. R002010004357 for the BMW mark, registered on April 13, 2011;
f. Indonesian trademark Registration No. R002008006947 for the mark BMW and Design, registered on May 22, 2009.

Complainant also owns registrations for the BMW GROUP mark in numerous countries, including the following representative registrations:

a. German Registration No. 302016105664 for the mark BMW GROUP, registered on January 11, 2017,
b. United States Registration No. 3689674 for the mark BMW GROUP in block letters, registered on September 29, 2009.

Complainant also owns and operates websites located at “www.bmw.com” and other country specific or regions specific websites such as “www.bmwusa.com”.

Complainant owns and uses domain names comprised of its BMW GROUP mark including:

(a) the domain name <bmwgroup.com>, which it registered in 1998 and has used as one of its main websites for many years,
(b) the domain name <bmwgroup.de>, which it registered in 2008 and which directs Internet users to its “www.bmwgroup.com” website, and
(c) the domain name <bmwgroup.jobs>, which it registered in 2005 and is used for its website advertising jobs at BMW. Complainant’s other domain name, which comprises the BMW mark and descriptive terms include <shopbmwusa.com>, which is used for Complainant’s online store for United States consumers that offers a wide range of BMW accessories, parts, and lifestyle products including men’s apparel.

The Domain Name was registered on March 4, 2020, and resolved to a gambling or betting website. At the time of the Decision, the Domain Name did not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for the BMW marks and owns many domain names incorporating the BMW and BMW GROUP marks. Complainant contends that Respondent registered and is using the Domain Name, which incorporate Complainant’s BMW mark and BMW GROUP mark in their entirety, to confuse Internet users looking for bona fide and well-known BMW products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

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

(iii) the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the BMW and BMW GROUP marks, which have been registered since at least as early as 1917 and 2017 respectively, well before Respondent registered the Domain Name in 2020 as noted above. Complainant has also submitted evidence, which supports that BMW is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the marks BMW and BMW GROUP. With Complainant’s rights in the BMW marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.website”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s BMW trademark and it is identical to Complainant’s BMW GROUP mark. The BMW mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the BMW marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the BMW trademarks or to seek registration of any domain name incorporating the trademarks.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website that features and promotes gambling. This website prominently displays Complainant’s BMW mark and logo, as well as the BMW GROUP mark on its home page, along with the Indonesian term “toto” – meaning “gambling” (as shown in the record) or “betting”. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.

Further, the nature of the Domain Name carries a high risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that Complainant provided ample evidence to show that registration and use of the BMW marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including Indonesia, where Respondent resides and operates. Therefore, Respondent was likely aware of the BMW marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known BMW trademark in its entirety with one or more additional terms as noted above, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the BMW mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well‑known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.

As discussed above, the Domain Name resolved to a website featuring and promoting gambling. This website prominently displayed Complainant’s BMW mark and logo, as well as the BMW GROUP mark on its home page, along with the Indonesian term “toto” – meaning “gambling” (as shown in the record) or “betting” in various combinations such as “Triototo”, “Huntertoto”, “Torpedototo”, “Mujurtoto” (meaning “lucky toto”) etc., as well as the term “poker”. Such use of the Domain Name is an intentional attempt to deceive and trade in on Complainant’s reputation in the industry, to attract and divert Internet users to a third party gambling or betting website. Therefore, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. In addition, such use of the Domain Name interferes with Complainant’s business, and potentially tarnishes Complainant’s good will and reputation.

In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith.

Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.

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 <bmwgroup.website> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 20, 2021