Bayerische Motoren Werke AG v Daniel crainic, Time Auto Group

WIPO Case No. D2024-0592

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Daniel crainic, Time Auto Group

Case No. D2024-0592

1. The Parties

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

The Respondent is Daniel crainic, Time Auto Group, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bmwoftigard.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2024.
On February 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 9, 2024, the Registrar transmitted by email to the
Center its verification disclosing the registrant and contact information for the disputed domain name which
differed from the named Respondent (Registration Private) and contact information in the Complaint. The
Center sent an email communication to the Complainant on February 14, 2024, 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 February 16, 2024.

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 February 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2024.

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The Center appointed William Lobelson as the sole panelist in this matter on March 18, 2024. 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 the world-famous German car manufacturer Bayerische Motoren Werke, aka BMW.

The Complainant is the owner of numerous trademarks BMW, inter alia:

- German Trademark “BMW” No. 410579 registered on November 15, 1929, International Class 7.
- United States of America Trademark “BMW” No. 0611710 registered on September 6, 1955, International
Class 12.

The disputed domain name <bmwoftigard.com> was registered on March 16, 2018, and resolves to a parking page with Pay-Per-Click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its earlier trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith, in particular in relation with a PPC page that displays advertising for, and redirect visitors to, various third-party websites and services, including some of which relate to or compete with Complainant and its BMW mark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy.

Namely, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name

(paragraph 4(a)(ii));

(iii)      the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii))

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A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here the geographical indication“of Tigard”, may bear on assessment of
the second and third elements, the Panel finds the addition of such terms does not prevent a finding of
confusing similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Complainant further contends that the Respondent is not known under the disputed domain name and
does not make any bona fide or legitimate noncommercial use of the same, being emphasized that the
disputed domain name does resolve towards a parking page with PPC links, on which the name
“bmwoftigard” is not used in relation with a genuine and bona fide offer of goods or services. Rather, the
PPC links seem to capitalize on the Complainant’s trademark.

In Bayerische Motoren Werke AG v. Private Registrations Akien Gesellschaft, WIPO Case No. D2010-0898, Panel found “no rights or legitimate interests where respondent used the domain for a pay-per-click website”.

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Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Complainant has substantiated the fact that its trademark BMWhas been registered and used for years, is distinctive and now benefits from a high level of public awareness.

Bayerische Motoren Werke AG v. Lucjan Niemic, WIPO Case No. D2003-0240 “BMW v. Niemiec” (finding Respondent registered the domain name in bad faith because “[i]t is inconceivable that the Respondent was not aware of the existence and worldwide reputation of the BMW trademark and of the Complainant’s activities when he registered the domain name.”)

Due to the longstanding use and reputation of the Complainant’s mark, the Respondent could not reasonably be unaware of the Complainant’s rights when it registered the disputed domain name and thus intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.

Bayerische Motoren Werke AG v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO
Case No. D2016-1951 “finding Respondent registered the domain name in bad faith given the notoriety of
Complainant’s BMW mark and the similarity of the disputed domain name with the trade name of the
Complainant’s authorized dealer in Turnersville”.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

It is noted in this respect that the disputed domain name resolves to a parking page with PPC links, where the name “bmwoftigard” is not used in relation with any genuine and bona fide offer of goods or services.

Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695. “Respondent’s use of a domain name confusingly similar to Complainant’s trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use.”

The Panel finds that the Complainant has established the third element 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 disputed domain name <bmwoftigard.com> be transferred to the Complainant.

/William Lobelson/
William Lobelson
Sole Panelist
Date: March 28, 2024