Bayerische Motoren Werke AG v. Cindy Reid

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Bayerische

Motoren Werke AG v. Cindy Reid

Case No.

D2001-0495

1. The Parties

The Complainant is

Bayerische Motoren Werke AG, a corporation organized under the laws of the

Federal Republic of Germany, with a principal place of business at Petuelring

130, Munich, Germany. The Respondent is Cindy Reid of 716 Camp Road, Denton,

MD 21629, USA.

2. The Domain Names

and Registrar

The domain names in

dispute are <bmwassist.com>, <bmwassist.net>, <bmwassist.org>,

<bmwassistplus.com>, <bmwassistplus.net> and <bmwassistplus.org>

("the Domain Names"). The Registrar for <bmwassist.com>

is Network Solutions. The Registrar for the other Domain Names is CORE,

specifically CORE 11 (Dusseldorf).

3. Procedural History

The Complaint was filed

at the WIPO Arbitration and Mediation Center ("the Center") by

email on April 4, 2001 and in hard copy on April 6, 2001. Details of the

registrations were confirmed by CORE on April 10, 2001 and by Network Solutions

on

April 12, 2001. The Notification

of Complaint and Commencement of Administrative Proceeding was sent to the parties

on April 20, in the case of the Respondent by email to mailitome@rocketmail.com

(the email address of the Respondent according to the whois data for each of

the Domain Names), hostmaster@speednames.com (the email address of the Administrative

and Billing Contacts according to the whois data for BMWassist.com and of the

Aministrative, Technical and Zone Contacts for the other Domain Names), namehost@WORLDNIC.COM

(the email address of the Technical Contact according to the whois data for

BMWassist.com) and postmaster@ each of the Domain Names, as well as by fax and

courier to the number and address indicated for the Respondent in the whois

data for each of the Domain Names. The fax transmission and emails to postmaster@

the respective Domain Names were not successful. There is no evidence that the

communications by other means did not reach the Respondent.

Having reviewed the

file, the Panel concludes that the Complaint complied with applicable formal

requirements and was properly notified to the Respondent.

There having been no

Response to the Complaint, the Center gave Notification of Respondent Default

on May 11, 2001. The single member Panel, Jonathan Turner, submitted a Statement

of Acceptance and Declaration of Impartiality and Independence and was duly

appointed on May 16, 2001.

4. Factual Background

The Complainant is a well-known

manufacturer of motor vehicles. Its name is frequently abbreviated to "BMW",

and this is registered as its trade mark in many countries, including the United

States. The Complainant has also used the names "BMW ASSIST" and "BMW

ASSIST plus" since July 14, 1999 to refer to "telematic" services

provided to owners of cars manufactured by the complainant equipped with a global

positioning navigational system and mobile telephone. The services comprise

automatic assistance in the event of accident or breakdown and the provision

of information about traffic, fuel stations, cinemas, restaurants or hotels

in the vicinity of a vehicle’s location. These services are currently offered

under these names only in Germany but have been publicized internationally under

these names through the Complainant’s website at www.BMW.com and articles in

the press.

From the information

in the whois databases, it appears that the Domain Names were registered

by the Respondent on December 19, 1999. The Complainant became aware of

the registrations on December 7, 2000, at which point the domain name BMWassist.com

was connected to a web site which listed all of the Domain Names, with the

statement "For sale as a GROUP only for $150,000." The Respondent’s

email address was listed on the web site. The whois record for BMWassist.com

also included the phrase "THIS DOMAIN FOR SALE" in the Administrative

Contact field. None of the other Domain Names was active.

By letter of December

7, 2000 sent by registered mail, the Complainant requested the Respondent

to discontinue further use or reference to any BMW trademark and to transfer

the Domain Names to the Complainant. A reminder letter was sent on

January 16, 2001, again

by registered mail. This was subsequently returned unclaimed, at which point

an email dated February 21, 2001 was sent to the Respondent requesting her

reply to the original letter. The Respondent replied by email dated

February 25, 2001,

stating: "I do not open attachments from strangers, unless you can

provide me with registered trademarks for bmwassist and or bmwassistplus

leave me alone and stop harassing me."

5. Parties’ Contentions

The Complainant contends

that the Domain Names are identical or confusingly similar to the trade

marks "BMW ASSIST" and "BMW ASSIST plus" in which it

has common law rights. Alternatively, the Complainant contends that the

Domain Names are confusingly similar to the trade mark "BMW" in

which it has registered as well as common law rights.

The Complainant further

submits that the Respondent has no rights or legitimate interest in respect

of the Domain Names and points to the offer of the Domain Names for sale

as evidence of bad faith.

As noted above, the

Respondent has not submitted a response to the Complaint.

6. Discussion and Findings

It is necessary first

to determine the appropriate language of this Proceeding. Under paragraph

11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules"), unless otherwise agreed or specified in the Registration Agreement,

the language of the Proceeding should be "the language of the Registration

Agreement, subject to the authority of the Panel to determine otherwise,

having regard to the circumstances of the administrative proceeding".

In the case of the

Domain Name registered with Network Solutions, the language of the Registration

Agreement is English. In the case of the other Domain Names, registered

with CORE 11 (Dusseldorf), the Registration Agreement is in both German

and English and specifies that both versions "are to be considered

as one". This agreement cross-refers to a version of the Uniform Domain

Name Dispute Resolution Policy ("the Policy") in English.

The Panel considers

that in these circumstances the language of the Registration Agreement may

be taken to be English for the purpose of paragraph 11(a) of the Rules.

However, if and to the extent necessary, the Panel determines that the language

of the Proceeding shall be English. This has the advantage of avoiding unnecessary

expense on translations and the inconvenience of having to consider the

Domain Name registered with Network Solutions separately from those registered

with CORE 11. The Respondent is resident in the United States and has replied

to the Complainant’s correspondence in English. It is clear that the Respondent

will not be prejudiced by the Proceeding being conducted in English.

In accordance with

paragraph 4 of the Uniform Domain Name Dispute Resolution Policy ("the

Policy"), a complainant must prove (i) that the domain name is identical

or confusingly similar to a trademark or service mark in which the complainant

has rights; (ii) that the Respondent has no rights or legitimate interests

in respect of the domain name; and (iii) that the domain name has been registered

and is being used in bad faith.

As to the first requirement,

the Panel considers that the respective Domain Names are identical to the

trade marks "BMW ASSIST" or "BMW ASSIST plus" for the

purpose of the Policy. For this purpose it is appropriate to ignore the

gTLD suffices; see Decision D2001-0154 (KCTS.com). The Panel is also satisfied

that the Complainant has unregistered rights in these marks at least in

Germany. In the absence of any indication of an intention on the part of

the Respondent to restrict her use of the Domain Names to a localized business,

the Panel considers that common law rights in any country, including Germany,

are relevant. Furthermore, the Panel considers that the Domain Names are

confusingly similar to the trade mark "BMW" in which the Complainant

has registered rights in, inter alia, the United States, where the Respondent

is located. Even to a person not familiar with the services provided under

the names "BMW ASSIST" or "BMW ASSIST plus", they would

indicate some form of assistance provided by the Complainant.

As to the second requirement,

the Panel considers that the Respondent does not have any right or legitimate

interest in respect of the Domain Names. The only use made by the Respondent

of the Domain Names has been to offer them for sale at a substantial price.

As to the third requirement,

the Panel is satisfied that the Respondent registered and is using the Domain

Names in bad faith, in particular for the purpose of selling them to the

Complainant for a consideration in excess of the cost of registration and/or

to prevent the Complainant from reflecting the marks "BMW ASSIST"

and "BMW ASSIST plus" in a corresponding domain name. This is

shown by the registration of the series of Domain Names which are identical

to the names used by the Complainant for its "telematic" services,

followed by their offer for sale as a package at an elevated price. The

Panel also considers that the registration of these six Domain Names is

sufficient to constitute a pattern of conduct within the meaning of paragraph

4(b)(ii) of the Policy, cf. WIPO Decision D2001-0102 (nikewomen.com et al.)

The Panel further considers

that the use of the Domain Names by a person other than the Complainant

would be likely to cause confusion and that these Domain Names should accordingly

be transferred to the Complainant.

7. Decision

The Panel decides that

the Domain Names <bmwassist.com>, <bmwassist.net>, <bmwassist.org>,

<mwassistplus.com>, <bmwassistplus.net> and <bmwassistplus.org>

should be transferred to Bayerische Motoren Werke AG of Petuelring 130,

Munich, Germany.

Jonathan

Turner

Sole Panelist

Dated: May

21, 2001

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