Bayerische
Motoren Werke AG v. Kerry Downs
Claim
Number: FA0202000104571
PARTIES
Complainant is Bayerische Motoren Werke AG, Munich,
GERMANY (“Complainant”) represented by Stacey
H. King, of Howrey, Simon, Arnold
& White, LLP. Respondent is Kerry Downs, Hemlock, WI
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <bmwmodels.com>,
registered with Tucows, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of her
knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
7, 2002; the Forum received a hard copy of the Complaint on February 8, 2002.
On February 11, 2002, Tucows,
Inc. confirmed by e-mail to the Forum that the domain name <bmwmodels.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On February 11, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 4, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@bmwmodels.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On March 13, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
Forum has discharged its responsibility under Paragraph 2(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ
reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. Complainant
is a famous, multi-national corporation organized under the laws of the Federal
Republic of Germany. Complainant
manufactures, distributes and markets various models of motor vehicles and
other products throughout the United States and the world.
2. Since
at least as early as 1917, Complainant has continuously used the trademark BMW
in commerce to manufacture, sell, distribute and market various models of motor
vehicles in Germany.
3. Since
at least as early as 1949, Complainant has continuously used the trademark BMW
in commerce to manufacture, sell, distribute and market motor vehicles
worldwide.
4. The
domain name at issue is not the name of Respondent, nor can it be considered
its business name or common trade name.
5. Respondent
is not a licensee of Complainant nor is Respondent otherwise authorized to use
the BMW marks for any purpose.
6. There
is no legitimate basis for Respondent’s registration and use of the <bmwmodels.com>
domain name.
7. The
use of domain names containing famous marks to route to web sites containing
adult content is not a legitimate noncommercial or fair use of a domain name
under Policy ¶ 4(c)(iii).
8. Respondent’s
acts constitute bad faith under Policy ¶ 4(b)(iv) as Respondent is using the
domain name <bmwmodels.com> to intentionally attract, for
commercial gain, Internet users to its web site, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its web site.
B. Respondent
No Response was
received.
FINDINGS
1. Complainant
owns all rights in and to the trademarks BMW, BMW and Design, and BMW MPOWER
(collectively “the BMW marks”) and has obtained the following trademark
registrations, among others:
|
Trademark |
Country of Registration |
Registration Number |
Registration Date |
|
BMW and Design |
Germany |
221388 |
Dec. 10, 1917 |
|
BMW |
Germany |
410579 |
Nov. 15, 1929 |
|
BMW |
United States |
611710 |
Sept. 6, 1955 |
|
BMW and Design |
United States |
613465 |
Oct. 4, 1955 |
|
BMW and Design |
United States |
1170556 |
Sept. 22, 1981 |
|
BMW and Design |
United States |
1450212 |
Aug. 4, 1987 |
|
BMW MPOWER |
United States |
1494126 |
Jun. 28, 1988 |
|
BMW |
United States |
1627241 |
Dec. 11, 1990 |
2. These registrations
are valid, subsisting, and in full force and effect. United States’ registrations numbers 611,710, 613,465, 1,170,556,
1,450,212, and 1,494,126 are incontestable under U.S. law, 15 U.S.C. §
1065.
3.
Respondent
registered the domain name <bmwmodels.com>
with Domain Direct on February 8, 2000.
4. On February 5, 2002, the website <bmwmodels.com> routed to a home
page for BMWMODELS.COM with the headline that read, “ABSOLUTELY THE BEST
BMWMODELS ON THE WEB.”
5. The home page for <bmwmodels.com> provides links to the various adult-content
goods and services offered to consumers at the web site.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a) of the
Policy requires that the Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) 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) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3) the domain name
has been registered and is being used in bad faith.
Identical
and/or Confusingly Similar
Complainant has rights
to the BMW mark due to the extensive use and registrations throughout the
world. Respondent’s domain name is
composed of Complainant’s BMW mark with the generic term “models.” Such a domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
See Victoria's Secret v. Model a/k/a Learmont, FA 96553
(Nat. Arb. Forum Mar. 2, 2001) (finding that the addition of the term ‘models’
or ‘lingeriemodels’ to Complainant’s mark did not reduce the likelihood of
confusion under Policy ¶ 4(a)(i)).
The Panel finds that
the domain name is confusingly similar to Complainant’s BMW mark, and that
Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
The Panel
therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with Complainant’s mark as to
the source, sponsorship, affiliation or endorsement of its website, which is
bad faith under Policy ¶ 4(b)(iv). The
posted pornographic material is evidence of bad faith when the domain name
being used is confusingly similar a to a famous mark. See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451
(Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent utilized a domain name confusingly similar to the
Complainant’s mark and used a pornographic depiction confusingly similar to
Complainant’s registered trademark on its website that would cause confusion as
to the source or affiliation of the site); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
Therefore, the Panel
concludes that Complainant has met the burden set forth under Policy ¶
4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief should be hereby granted.
Accordingly,
it is Ordered that the <bmwmodels.com>
domain name be transferred from Respondent to Complainant.
Sandra
Franklin, Panelist
Dated:
March 21, 2002
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