ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Quality Services
Case No. D2003-0077
1. The Parties
The Complainant in this Administrative Proceedings is Bayerische Motoren Werke AG, a corporation organised and existing under the laws of the Federal Republic of Germany, with a principal place of business at Petuelring 130, Munich, Germany.
The Respondent is Quality Services having an address at AreaGuides.com, P.O. Box 4025, Gaithersburg, MD 20885, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name .
The registrar with which the domain name is registered is TierraNet Inc. dba DomainDiscover (the “Registrar”).
3. Procedural History
On February 3, 2003, the Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999. The hard copy was received on February 5, 2003.
On February 4, 2003, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant by e-mail.
On February 4, 2003, in response to a Request for Registrar Verification from the Center, the Registrar confirmed inter alia that the said registration was registered by the Registrar, that the Respondent was the registrant of said domain name. The Registrar provided the contact details of the Respondent from its database and confirmed that the language of the Service Agreement was English.
The Center reviewed the Complaint and the response to the Request for Registrar Verification and noted that the Complaint, as filed, identified the Respondent incorrectly as AreaGuides.com whereas the Registrars database identified the owner of the domain name as Quality Services. The Center requested the Complainant to file an amendment to the Complaint, correctly identifying the Respondent. In response to this request the Complainant filed the requested amendment on February 6, 2003.
On receipt of said amendment to the Complaint, the Center was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter “the Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter “the Supplemental Rules”) and that the appropriate fees had been paid by the Complainant.
On February 7, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, by post/courier (Complaint with enclosures), facsimile (Complaint without attachments), and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers (“ICANN”) and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on February 7, 2003, and that the Respondent was required to submit a Response to the Center on or before February 27, 2003.
On February 25, 2003, the Respondent filed the Response by e-mail and on March 3, 2003, the Center acknowledged receipt of same.
On March 4, 2003, having received a Statement of Acceptance and Declaration of Impartiality from James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member.
On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and the case file was transferred to this Administrative Panel.
In the view of this Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
Subsequent to the appointment of this Administrative Panel, the Parties each purported to file further unsolicited arguments and submissions. There is no provision in the Rules for such further submissions. Having reviewed these submissions, this Administrative Panel has decided that there are no exceptional circumstances present whereby the content of same should be admitted into evidence and consequently this decision has been reached on the basis of the Complaint and Response filed in accordance with the Rules.
4. Factual Background
The Complainant carries on business as a manufacturer and distributor of motor vehicles and motor cycles. The Complainant has used the trademarks BMW and BMW and Device in Germany since 1917, and since then, in many jurisdictions througout the world.
The Complainant is the owner of the German registered trademark BMW and Device, registration number 221388, dated December 10, 1917, registered in class 12 for numerous goods including automobiles and is also the owner of German registered trademark BMW, registration number 410579, dated November 15, 1929, registered in classes 7 and 12 for numerous goods including aircraft engines, land, air, water vehicles and motorcycles.
For more than 83 years the Complainant has used the BMW trademark and BMW and Device trademark throughout the world and has secured trademark registrations in over 120 jurisdictions in respect of these marks. The Complainant has provided evidence of a number of registrations in the USA, the jurisdiction of residence of the Respondent.
The Complainant states that it offers services under the official title “BMW Service” and in this regard the Complainant has submitted print-outs of webpages on its websites maintained at the the following addresses: “bmw-service.com”; “bmw-service.de”; and “bmwservice.de”. These print-outs are all dated January 29, 2003, and, as such, are of little evidential value in these proceedings.
There is very little information about the Respondent. Its legal status remains unclear.
5. Parties Contentions
The Complainant submits that by reason of the efforts and care of the Complainant and the excellent quality of the Complainants goods and services, the BMW trademarks have become unique and identified by the public solely with the Complainant and its products and services. The Complainant submits that it is the owner of an extremely valuable reputation and goodwill in the USA and other jurisdictions throughout the world, not only among purchasers of the Complainants products and users of its services but also among members of the public.
The Complainant points to the decision of the administrative panel in BMG v. Loophole (WIPO Case No D2000-1156, October 26, 2000) in which the panel acknowledged that the BMW trademarks are well known throughout the world.
In the Complaint, the Complainant submits that it first became aware of the Respondents domain name registration on July 24, 2002. At that time the domain name was connected to a website on which the following message was posted: “This domain is for sale. Dont miss this opportuntiy to secure an excellent locatioin for your website. After all, the best website in the world in meaningless if its located on a poor domain! ” The message posted went on to give a contact telephone number and e-mail address.
The Complainant submits that the Respondent has never been entitled to use any of the Complainants trademarks. The Respondents use of the Complainants trademarks is neither connnected to, sponsored by, authorised by, nor within the control of the Complainant.
The Complainant wrote to the Respondent on July 24, 2002, and the Complainant advised the Respondent that its unauthorised use of the BMW trademark in connection with the disputed domain name violated its trademark rights, requested that the Respondent discontinue further use of the domain name and further requested that the Respondent transfer the domain name to the Complainant.
Subsequently the webpage offering the domain name for sale was removed from the web, but no response was received by the Complainant to the above correspondence.
The Complainant submits that the domain name is identical or confusingly similar to the Complainants trademarks. The dominant and distinctive component of the disputed domain name is the combination of letters BMW. The Complainant submits that the addition of the generic word “service” does not make the predominant element any less distinctive. In support of this argument the Complainant refers to the decision of the administrative panel in Toyota France and Toyota Jidosha K.K. d/b/a v. Computer Brain (WIPO Case No. D2002-0002) in which the administrative panel ruled that the domain name is substantially identical to and confusingly similar to the trademark TOYOTA.
The Complainant further submits that the Complainant offers maintenance and service for its automobiles and motorcycles world-wide through its own service outlets and its official dealership network, and therefore the addition of the word “service” to the name BMW is even more likely to create rather than alleviate any confusion. In support of this argument the Complainant refers to the decision of the administrative panel in Bellsouth Intellectual Property Corporation v. Freeworld an/or Luis, (WIPO Case No. D2000-1807, March 14, 2001).
The Complainant submits that the ending “.com” is a generic element of the gTLD, which is not sufficient to render a domain name dissimilar or prevent consumer confusion.
The Complainant submits that the Respondent has no rights or legitimate interest in the domain name. It is not a licensee of the Complainants trademarks nor has it been authorised in any way to use any of them.
The Complainant submits that the offer to sell the domain name on a website to a third party is evidence of bad faith registration and use of the domain name within the meaning of Paragraph 4(b) of the Policy.
Specificially the Complainant submits that such offer for sale amounts to 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 the Complainant, for valuable consideration in excess of the domain name registrants out-of-pocket costs directly related to the domain name. In support of this assertion the Complainant refers to the decision of the administrative panel is Schott Glas and Nec/Schott Components Corp. v. Neschott (WIPO Case No. D2001-0127, March 14, 2001) in which the administrative panel cited eight earlier decisions applying the same principle.
The Complainant submits that it is irrelevant that the Respondent did not contact the Complainant directly with an offer for sale. The Complainant further submits that it is irrelevant that the Respondent did not list a specific price on the website since by making a general statement that the domain name was for sale, the Respondent was in effect asking potential buyers to make an offer and was holding out for more than out of pocket expenses. In this regard the Complainant refers to the decision of the administrative panel in TOROC & IOC v. Hufschmid (WIPO Case No. D2001-0604, June 14, 2001).
Finally, the Complainant submits that the Respondents statement that the domain name is an “excellent location” for a website indicates that the Respondent values the domain name with a worth greater than the registration costs and would sell the domain for a profit.
The Respondent submits that the domain name was registered by the Respondent on November 3, 1998, in connection with the Respondents then intention to develop and promote a website providing information regarding the service records, history and performance of BMW automobiles. The Respondent states that prior to the time of registration, a principal of the Respondent was the owner of a roadster automobile made by the Complainant and that said automobile maintained a less than satisfactory service history. As a result of this dissatisfaction, the principal sold the automobile in question. The Respondent believed that other owners were in a similar situation and intended to establish a website as a location where consumers could voice their concerns, and possibly their praise for BMW vehicles.
The Respondent states that at no time did the Respondent offer the disputed domain name for sale to any party including the Complainant. Instead, the Respondent “may have merely and inadvertently pointed the registered domain name to a placeholder website until such time as the free-speech site could be developed and launched.” The Respondent comments also that the print-out of the “placeholder” site furnished by the Complainant as an annex to the Complaint, makes no reference to the domain name in dispute, but the Response goes on to state that “ in good faith the Respondent acknowledges that the placeholder webpage shown (in the Complaint) may have been the actual webpage to which the domain name was inadvertently pointed.”
The Respondent further submits that it is absolutely more important and dispositive of the issues in casu that once the Respondent became aware of “the inadvertent pointing of the domain name to a placeholder webpage”, the Respondent reasonably and immediately voided all link pointers and left the domain name pointing only to the Registrars place holder webpage.
With regard to the issue of the Respondents rights and legitimate interest in the domain name, the Respondent submits that it sought to use the domain name in the exercise of free speech to promote a place where dissatisfied customers could congregate to air their problems with their automobiles. Furthermore, the Respondent argues that the Complainant cannot successfully assert that the Respondent exercised bad faith in registering, or in using the disputed domain name as the Respondent merely made an inadvertent mistake in pointing the domain name to an “innocuous” place holder webpage.
The Respondent submits that the Complainants application to have this domain name transferred is tantamount to stealing, and requests that the Complainants application be refused.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and (iii) the said domain name has been registered and is being used in bad faith. It is clearly apparent to this Administrative Panel that the domain name in dispute is confusingly similar to the Complainants registered trademarks.
The dominant element in the domain name is the letters BMW. Given the descriptive nature of the word “service” and its meaning in the automobile and motorcycle industry, this Administrative Panel accepts the Complainants argument that the addition of the word “service” to the name BMW is probably more likely to create rather than alleviate confusion among users of the Internet.
The similarity of the domain name and the Complainants BMW trademark is implicitly accepted by the Respondent in its arguments as the Respondent claims to have chosen this domain name as an address for a website on which to post a debate on the faults of the Complainants BMW vehicles.
The onus is on the Complainant to prove each of the elements in the test in paragraph 4(a) of the Policy. With regard to the Respondents rights or legitimate interest in the domain name, this Administrative Panel accepts that the BMW trademark is a distinctive, well-known and famous mark, with a long established goodwill in the automobile and motorcycle industries in most jurisdictions throughout the world. The Complainant has submitted that the Respondent has never received any licence or other permission to use the Complainants trademarks.
The Respondents claim to have rights or a legitimate interest in the domain name is essentially based its entitlement to exercise free speech by establishing a gripe site at this address as a forum for a debate on the faults of the Complainants BMW vehicles.
The Respondent has asserted that it intended to establish such a website when the domain name was first registered. The Respondent has not produced any evidence of any steps whatsoever taken to establish such a site since the domain name was first registered on November 3, 1998. Neither has the Respondent provided any evidence of its claim that one of its unidentified principals was once the owner of a BMW vehicle.
Balancing the unsupported assertions of the Respondent against the evidence provided by the Complainant that the Respondent was offering to sell the domain name, in the view of this Administrative Panel, the Respondents claim to have registered the name in order to create a bona fide gripe site is improbable.
This Administrative Panel therefore concludes that, on the balance of probabilities, the Respondent has no rights or legitimate interest in the domain name.
The Complainant has furnished evidence that the Respondent offered the domain name for sale on a website. There has been argument from the Respondent that the posting of this statement was an inadvertent act on its behalf and as soon as it was alerted to the fact that the domain name was being offered for sale, it removed the link to that particular site. There is no explanation given as to how this may have happened and in the view of this Administrative Panel, the Respondent should be expected to provide a more detailed explanation or evidence of how such a mistake may have occurred. In the circumstances, this Administrative Panel must conclude that there was no mistake and the Respondent intended to offer this domain name for sale.
The Respondents argument that it registered the domain name with the intention of establishing a gripe site has been rejected by this Administrative Panel. The Respondent acknowledges that the domain name was offered for sale on a third party site. In the absence of any acceptable explanation by the Respondent as to why the registration was made and the domain name is being used, this Administrative Panel accepts the case made by the Complainant 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 (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrants out-of-pocket costs directly related to the domain name. In reaching this decision this Administrative Panel is supported by the decision of the administrative panel in Schott Glas and Nec/Schott Components Corp. v. Neschott (WIPO Case No. D2001-0127, March 14, 2001). Citing eight earlier decisions of other administrative panels, the decision stated: ” Prior ICANN decisions have found that offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor.”
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the domain name is confusingly similar to the Complainant’s BMW trademark, that the Respondent has no rights or legitimate interest in respect of said domain name and that the Respondent has registered and is using said domain name in bad faith.
Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.