Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc.

Case No. D2003-0367

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Petuelring Munich, Germany,

represented by Aimee Gessner of Germany.

The Respondent is Peter Carrington also trading as Party Night Inc., Jan Luykenstraat

Amsterdam, Netherlands.

2. The Domain Names and Registrar

The disputed domain names

<bmwfillms.com>

<bmwfils.com>

<bmwfimls.com>

<bmwfims.com>

<bmwflim.com>

<bmwuas.com>

are registered with Key-Systems GmbH dba domaindiscount24.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on May 13, 2003. On May 13, 2003, the Center transmitted

by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar

verification in connection with the domain names at issue. On May 22, 2003,

Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center

its verification response confirming that the Respondent is listed as the registrant

and providing the contact details for the administrative, billing, and technical

contact. 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, and the proceedings commenced on May 26, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

June 15, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on June 16, 2003.

The Center appointed Arne Ringnes as the sole panelist in this matter on July 4, 2003.

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

Panelist, in accordance with the Rules paragraph 10 (c) extended the decision

due date to July 22, 2003.

4. Factual Background

The Complainant carries on business in the manufacture and distribution of

motor vehicles and is commonly known as BMW AG. The trademarks "BMW"

and "BMW and design" have been in use since as early as 1917 in Germany.

The details of these registrations are summarized as follows:

Trademark: BMW and design

Country: Germany

Registration No. 221388

Reg. Date: December 10, 1917

Class: 12

Goods: Land, air, water vehicles, automobiles, bicycles, accessories for automobiles

and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous

operating supplies and their components and accessory parts.

Valid until: October 31, 2007

Trademark: BMW

Country: Germany

Registration No. 410579

Reg. Date: November 15, 1929

Class: 7, 12

Goods: Aircraft engines, land, air, water vehicles, motorcycles, internal combustion

engines for solid, liquid and gaseous operating supplies and their components.

Valid until: February 28, 2009

The Complainant is the registered owner of BMW Trademarks in over 120 countries

worldwide, and over the last 83 years, the Complainant and its subsidiaries,

importers, dealers, and licensees have used the BMW Trademarks throughout the

world, directly and through appropriate licenses and permission.

Complainant’s trademark registrations includes Community Trademark "BMW"

(Community Registration No. 91835), as well as the following US trademarks:

Trademark

Country

Reg. No.

Reg. Date

BMW

USA

S-12960

September10, 1993

BMW

USA

611710

September 6, 1955

BMW

USA

1627241

December 11, 1990

BMW

USA

1164922

August 11, 1981

In addition to motor vehicles and other goods listed in the registrations

above, the BMW Trademarks are currently used in relation to a wide variety of

goods, including various accessories and merchandise, such as clothing, watches,

sunglasses and leather goods, which promote the image and lifestyle that are

associated with BMW automobiles and motorcycles. Services such as the repair

and maintenance of motor vehicles, financial leasing of motor vehicles, and

participation and sponsorship of sporting events, are also covered by various

trademark registrations.

By e-mail dated September 17, 2002, the Complainant advised the Respondent

that the unauthorized use of the BMW trademark in his domain registrations,

especially in association with pornography, tarnished and violated its trademark

rights. Respondent has failed to respond to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain names at issue are identical or confusingly

similar to the Complainant’s BMW trademark. The more dominant and distinctive

component of the disputed domain names is "BMW", which is identical

to the Complainant’s registered and well-known trademark "BMW". The

addition of any further terms to a well-known trademark does not preclude similarity

to the mark and is not sufficient to render a domain name dissimilar or to prevent

consumer confusion. As support for this general proposition Complainant refers

to General Electric Company v. Forddirect.com, Inc. WIPO

Case No. D2000-0394, as support for this general proposition.

In addition or in the alternative, the Complainant submits that the domain

names <bmwfillms.com>, <bmwfils.com>, <bmwfimls.com>, <bmwfims.com>

and <bmwflim.com> are confusingly similar to the mark "bmwfilms.com",

for which the Complainant has common law rights by way of its use and advertising

of its "www.bmwfilms.com" website. Similarly, the Complainant also

submits that the domain name <bmwuas.com> is confusingly similar to the

mark "bmwusa.com", for which the Complainant has common law rights

by way of its use and advertising of its "www.bmwusa.com" website.

Complainant alleges that the Respondent deliberately has positioned himself

to take advantage of typographical errors by the Internet user when entering

the URL of a known mark or domain name, a practice that is known as typosquatting.

Complainant further submits that the Respondent has no rights or legitimate

interests in respect of the domain name that is the subject of the Complaint.

The Respondent is not a licensee of the Complainant’s marks and has not been

authorized in any way to use the same. The Respondent has made no legitimate

non-commercial or fair use of the domain name.

The use of typosquatting to divert Internet users to pornographic websites

does not demonstrate any legitimate interest.

The Complainant submits that the Respondent was, as under Paragraph 4(b)(iv)

of the Policy, intentionally attempting "to attract, for commercial gain,

Internet users to [the] website....by creating a likelihood of confusion with

the complainant’s mark as to the source, sponsorship, affiliation, or endorsement

of [the] website or location or of a product or service on the website or location."

The Respondent’s domain names were connected to commercial pornographic websites,

and it can also be inferred that the Respondent commercially benefits from diverting

consumers to the numerous advertisements for other pornographic sites that automatically

appear when typing in the domain names at issue. Such a use carries with it

the likelihood of confusing Internet users, who mistype the Complainant’s URL

while searching for the Complainant’s websites.

In fact, the actions of the Respondent (i.e. the use of the domain names to

divert Internet traffic to pornographic sites) has been held in previous decisions

involving the Respondent to represent bad faith use of the domain names. (America

Online, Inc. v. Peter Carrington d/b/a Party Night, Inc., NAF Case No. FA0208000118314.)

VI. Remedies Requested

[Rules, para. 3(b)(x)]

The Complainant requests the Administrative Panel to issue a decision that

the contested domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proved that the domain names in question

are confusingly similar to Complainants trademark rights. This finding is based

on the following grounds:

Complainant has submitted evidence that shows that Complainant is the owner

of the trademark "BMW" in Germany and the United States as well as

the owner of the Community Trademark "BMW". The Community Trademark

is also effective in the Netherlands – which is the country in which Respondent

has its address. It is further the Panel’s understanding that "BMW"

is a well known trademark in many parts of the world.

In Respondent’s domain names certain letters are added to "BMW",

all of them being misspellings of the word "film", i.e. "films",

"fils", "fimls", "fims" and "flim"

or a misspelling of "USA" i.e. "UAS". The Panelist

is in no doubt that these additions do not distance the domain names from Complainant’s

trademarks sufficiently to avoid confusion. Clearly, the dominant parts of the

names are "BMW".

Accordingly, the Panel concludes that the first condition under the Rules is

satisfied.

B. Rights or Legitimate Interests

It is submitted by Complainant that the Respondent has never been entitled

to use any of the Complainant’s trademarks. Respondent’s use of the trademark

"BMW" is neither connected to, sponsored or authorized by, nor within

the control of the Complainant.

There is no evidence in the matter that refutes this submission, and the Panelist

finds that Complainant has proved the second condition under the Rules.

C. Registered and Used in Bad Faith

The relevant question to consider with respect to this third condition under

the Rules, is whether the Respondent by using the domain name, has intentionally

attempted to attract, for commercial gain, Internet users to his website or

other on-line location by creating a likelihood of confusion with the Complainant’s

mark.

Complainant has submitted that he first became aware of the Respondent’s registrations

on August 8, 2003, after trying to reach its official American website

at "www. bmwusa.com". Instead, a typographical error was made while

typing the URL ("www.bmwuas.com") and the Complainant was redirected

to a pornographic website at "www. Hanky-panky-college.com". A series

of other pornographic pages and other advertising banners or pages were automatically

generated after being redirected to the Respondent’s websites. The domain name

<bmwuas.com> was found to have been registered by the Respondent on June 3, 2002.

After further research, the Complainant also found further registrations by

the Respondent that mimic the Complainant’s domain name <bmwfilms.com>

namely <bmwfims.com>, <bmwflim.com>, <bmwfillms.com>, <bmwfils.com>,

<bmwfimls.com>. These domain names also pointed to the same pornographic

content and were registered by the Respondent on November 17, 2002.

Complainant points out that the websites at "www.bmwusa.com" and

"www.bmwfilms.com" are popular official "BMW" websites.

The domain name <bmwusa.com> is used as that main website of the Complainant’s

BMW products and is aimed primarily at the American market. The domain name

<bmwfilms.com> is used by the Complainant in connection with a series

of short films which center on the BMW driving experience and has enjoyed great

success worldwide.

Based on these facts, which has not been countered by Respondent, the Panel

finds that the Respondent uses the domain names in order to divert Internet

users from Claimant’s sites to pornographic sites which carries on commercial

activities. In order to achieve this the Respondent uses typical typographical

errors of the word "film" and name "USA" which are part

of Complainant’s domain names <bmwfilms.com> and <bmwusa.com>. Accordingly,

the Panelist is of the opinion that Complainant has proved the third condition

under the Rules, namely that Respondent’s domain names have been registered

and are being used in bad faith.

7. Decision

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 names:

<bmwfillms.com>

<bmwfils.com>

<bmwfimls.com>

<bmwfims.com>

<bmwflim.com>

<bmwuas.com>

are transferred to the Complainant.

Arne Ringnes

Sole Panelist

Date: July 22, 2003

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