Bayerische Motoren Werke AG v. vneye

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Bayerische Motoren Werke AG v. vneye

Case No. D2003-0627

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented by legal counsel of BMW AG, Germany.

The Respondent is vneye, junbuk, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <bmwtelematics.com> is registered with Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2003. On August 11, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On August 14, 2003, Network Solutions, Inc. 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 August 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2003. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on September 9, 2003.

It should be noted however, that Respondent had sent an email in Korean/English to the Center on August 13, 2003, apparently explaining the reasoning behind the registration of the disputed domain name. On August 18, 2003, the Center explained the formal procedure for the UDRP including when and how to submit a formal response.

The Center appointed Knud Wallberg as the sole panelist in this matter on September 19, 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.

4. Factual Background

The Complainant carries on business in the manufacture and distribution of motor vehicles. The trademarks "BMW" and "BMW and design" (hereinafter referred to as the "BMW Trademarks") have been in use since as early as 1917 in Germany.

The Complainant is also the registered owner of BMW Trademarks in over 120 countries worldwide. Due to the location of the residence of the Respondent, the Complainant has, in particular, enclosed details of trademark registrations in the Republic of Korea (for various goods including passenger cars) and copies of these registration certificates were attached to the Complaint.

5. Parties’ Contentions

A. Complainant

(i) The disputed domain name is identical or confusingly similar to BMW Trademarks

In accordance with paragraph 4(a)(i), the Complainant submits

that the domain name <bmwtelematics.com> is identical or confusingly similar

to the trademark "BMW". The dominant and distinctive component of

the disputed domain name is "BMW" which is identical to the Complainant’s

registered trademarks.

The addition of the generic word "telematics" does not make the predominant

element "BMW" less distinctive. See for example, Toyota France

and Toyota Jidosha K.K.d/b/a Toyota Motor Corporation v. Computer-Brain,

WIPO Case No. D2002-0002 in which the

Panel ruled that the domain name <toyota-occasions.com> is substantially

identical to and confusingly similar to the trademark "TOYOTA".

The word "telematics" is in fact a common term used in the automobile

industry, which is a word which refers to the combination of telecommunications

and computer science. The field of telematics covers technology used in cars

such as voice recognition systems, navigation systems and wireless Internet

connection. Reference material regarding telematics from the publication "Automotive

New Europe: Guide to Vehicle Technology", October 22, 2001, was enclosed

to the Complaint.

Furthermore, the Complainant actually offers telematic products and services

to its customers and therefore the addition of the word "telematics"

to the name "bmw" is even more likely to create confusion rather than

alleviate any confusion. See Bellsouth Intellectual Property Corporation

v. Freeworld and/or Luis, WIPO Case No.

D2000-1807 with respect to the domain name <bellsouthpages.com>.

Finally, the ending .COM is a generic top level domain which

is not sufficient to render a domain name dissimilar or to prevent consumer

confusion.

(ii) Respondent’s Lack of Legitimate Interests

In accordance with paragraph 4(c) of the Policy, the Complainant 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 mark 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.

(iii) Respondent’s Registration and Use of the Domain Name

in Bad Faith

Paragraph 4(b) of the Policy lists the circumstances, in particular

but without limitation, which are evidence of bad faith.

Paragraph 4(b)(i) states that circumstances indicating that the domain name

was registered or acquired primarily for the purpose of selling, renting, or

otherwise transferring the domain name registration to the owner of the trademark

or service mark or to a competitor of that Complainant, for valuable consideration

in excess of the domain name registrant’s out-of-pocket costs directly related

to the domain name shall be evidence of registration and use of a domain name

in bad faith.

The evidence presented above regarding the numerous emails sent by the Respondent

directly to the Complainant as well as the "Domain For Sale" web sites

linked to "www.bmwtelematics.com", which have explicitly named prices

which are greater than the Registrant’s out-of-pocket costs, clearly indicates

bad faith within the meaning of paragraph 4(b)(i) of the Policy.

Paragraph 4 (b)(iv) of the Policy also includes a further situation which is

indicative of bad faith. This refers to the situation in which "by using

the domain name, you have intentionally attempted to attract, for commercial

gain, Internet users to your web site or other on-line location, by creating

a likelihood of confusion with the complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of your web site or location or of a product or

service on your web site or location".

The domain name <bmwtelematics.com> was linked to several different web

sites, most recently to a search web site for various topics, including gambling.

Such search web sites are normally financed with revenue from the web sites

that are featured in the searches. Such use of <bmwtelematics.com> thus

constitutes use of the domain name in a commercial manner. The search web site

also does not contain any information that is specific to the Complainant’s

products or services and is being used merely to attract Internet users searching

for information regarding BMW telematic products and services. Others who accidentally

come across the web site may be confused as to whether the Respondent’s web

site is sponsored or affiliated by the Complainant or one of its subsidiaries.

For the reasons outlined above, the Complainant submits that the Respondent

is, as under paragraph 4(b)(iv) of the Policy, intentionally attempting "to

attract, for commercial gain, Internet users to [the] web site....by creating

a likelihood of confusion with the complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of [the] web site or location or of a product or

service on the web site or location".

Finally, the Respondent also changed its registration details several times

in an attempt to avoid liability for its misuse of the domain name. This circumstance

should also be taken as inference of bad faith within the meaning of paragraph

4(b) of the Policy.

B. Respondent

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

The Panel has read the previous communication between the parties as well as

the Respondent’s e-mail to the Center of August 13, 2003, but this communication

is very difficult to understand and gives no basis for further scrutiny by the

Panel.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint

in accordance with the Policy, the Rules and any rules and principles of law

that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

2) that the Respondent has no legitimate interests in respects of the domain

name; and

3) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant is the owner of numerous trademark registrations for "BMW"

worldwide including in the country of residence of the Respondent, Republic

of Korea.

The distinctive part of the contested domain name contains the "BMW"

mark in full with the addition of the word "telematics". The Panel

finds that Complainant has proven that this word is a generic term (also) within

the automobile sector and that the term is actually used by Complainant in connection

with their products.

The Panel therefore finds that it is highly likely the disputed domain name

in the public’s mind will be associated with the Complainant’s trademark. The

domain name must therefore be considered confusingly similar to Complainant’s

trademarks.

The prerequisites in the Policy, paragraph 4 (a) (i) are therefore fulfilled.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted Respondent to use its

trademark or to apply for any domain name incorporating the mark.

No formal Response was filed in the case and under these circumstances the

Respondent must bear the consequences of not having proved that he has any prior

rights or legitimate interests in the domain name.

The prerequisites in the Policy, paragraphs 4 (a) (ii), and 4 (c) are also

considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4 (a) (iii) of the Policy further provides registration and use in

bad faith. Paragraph 4 (b) regulates, by way of example, the kind of evidence

that is required.

Due to the notoriety of Complainant’s mark and in the absence of a response

the Panel finds it unlikely that Respondent did not know Complainant’s trademark

when registering the disputed domain name.

The domain name has been used in many different ways which all are likely to

disrupt or otherwise hamper the business of the Complainant. Also, the domain

name has been explicitly offered for sale for an amount that clearly exceeds

the out of pocket costs of registering the domain name.

Bearing these facts and the facts mentioned above under A) and B) in mind,

the Panel finds that the domain name has been registered and is being used in

bad faith, paragraphs 4 (a) (iii) and 4 (b).

Consequently, all the prerequisites for cancellation or transfer of the domain

name according to paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

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 disputed domain name <bmwtelematics.com>

be transferred to the Complainant.

Knud Wallberg

Sole Panelist

Dated: October 2, 2003

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