The domain name dispute in question was filed with the WIPO Arbitration and Mediation Center on September 2, 2005 and decided by a sole panelist on October 20, 2005.
The disputed domain name was registered with eNom on June 11, 2005, eleven days before BMW AG acquired a majority shareholding in Sauber Motorsport AG and announced that BMW and Sauber would jointly create a Formula One racing team. BMW and Sauber allege that the respondent was speculating on the merger in response to rumors in the press about the potential collaboration that had been circulating since February 2005.
BMW and Sauber submit that the respondent, an auto repair shop specializing in Datsun Z cars, was not a trademark licensee and therefore lacked authorization to use their names or logos. They also allege that in response to the complaint, the respondent attempted to act like a racing fan by posting “fake” content on the website in order to show fair use.
The respondent denied having an ulterior financial motive and insisted it was “truly” a racing fan. It also posted a disclaimer stating that “this website is in no way affiliated with or sponsored by BMW or Sauber.”
The complaint was filed with the WIPO Arbitration and Mediation Center and adjudicated by a sole panelist. In order to effect transfer of the domain name, the panel required that the complainant prove that (a) the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights, (b) the respondent has no rights or legitimate interests in respect of the domain name, and (c) the domain name is being used in bad faith.
On the question of whether the domain name was identical or confusingly similar to the trademarks in question, the panel held that since the domain name was simply a combination of the trademarks BMW and Sauber, it failed to be sufficiently distinctive to avoid confusion with those two trademarks. The panel cited prior WIPO decisions that have held that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name was identical or confusingly similar to that trademark.
Next the panel considered whether, assuming arguendo that the respondent was an eager Formula One fan, it was legitimate to use the well-known trademarks in the domain name of its website without authorization. The panel stated, without further analysis, that a “true enthusiast would probably comply” with the wishes of the trademark holders and either cancel the domain name or close the website, and therefore held that the respondent’s interest was not legitimate. The panel offered no evidence for this assumption.
Finally, the panel concluded that the disputed domain name was registered in bad faith on the grounds that the respondent (1) admitted that rumors of a potential F1 collaboration was the motivation behind registration and (2) claimed to have no economic interest related to the domain name. The panel did not explain why it considered lack of economic interest to be a factor in showing bad faith rather than simply a factor to be considered under the second element of the test – that the respondent has no rights or legitimate interests in respect of the domain name.
The court ordered that the domain name be transferred to BMW AG in accordance with the Uniform Domain Name Dispute Resolution Policy.