Bayerische Motoren Werke AG of Munich, Germany, (BMW) just won the rights to the domain hack b.mw in a UDRP decision.

We wrote about the filing of the UDRP back in July 24th of this year, as .mw is a ccTLD (country code domain extension)

This is another case where a panel looked at both of sides of the dot to grant trademark protection

Here are the highlights:

It is apparent to the Panel that the Respondent was aware of the Complainant’s distinctive and well-known BMW mark when registering the disputed domain name. The Panel concludes that the Respondent did so in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant.

Instead, the Respondent has used the disputed domain name to redirect Internet visitors to another website on which the disputed domain name has been offered for sale for USD 1,000,000 or more.

The Panel concludes from the record as a whole that the Respondent registered the disputed domain name intending to exploit and profit from the goodwill and reputation of the Complainant’s BMW mark.

Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.

In light of this, the Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted earlier, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.

As noted above the Panel concludes that the Respondent was aware of the Complainant’s BMW mark when registering the disputed domain name. For the reasons noted earlier, and in the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s has engaged in the abusive registration and use of the disputed domain name, seeking to trade on the goodwill and reputation of the Complainant’s well-known BMW mark, and attempting to sell the disputed domain name for an amount well in excess of any out-of-pocket registration costs. This is underscored by the fact that the disputed domain name is offered for sale at a price exponentially higher than any other domain name offered for sale by the Respondent. In other words, the inescapable conclusion is that the Respondent is clearly targeting the Complainant with a view to extracting money on the back of the Complainant’s fame in its mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.