WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayerische Motoren Werke AG v. Peeter Aps Case No. D2018-2293 1. The Parties

The Complainant is Bayerische Motoren Werke AG of Germany represented by Kelly IP, LLP of the United States of America (the “U.S.”).

The Respondent is Peeter Aps of Estonia. 2. The Domain Name and Registrar

The disputed domain name (“Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 October 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on November 12, 2018.

The Center appointed Jon Lang as the sole panelist in this matter on November 21, 2018. 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 one of the most successful manufacturers of automobiles and motorcycles in the world.

It owns the trademark, service mark and trade name BMW. Under its BMW mark, the Complainant manufactures, sells, and distributes an array of automobiles and motorcycles, and provides numerous services including maintenance and repair services, financing, leasing, insurance and warranty services. The Complainant also uses and licenses its BMW mark for a wide variety of automobile and motorcycle parts and accessories and numerous additional products such as apparel.

The Complainant has for several years used its BMW mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles and related products and services. The Complainant’s websites are accessible via domain names comprised of the BMW mark alone and also combined with relevant geographic and/or descriptive terms.

The Complainant has, for several years, permitted its authorized dealers to use trade names and domain names comprised in part of the BMW mark for their authorized BMW businesses. Their trade names and domain names frequently comprise the BMW mark and the dealer’s name and/or geographic location.

The Complainant has offered, for several years, proprietary diagnostic systems comprising hardware and software which is used for maintenance, repair, servicing and programming i.e. coding, of BMW automobiles. The Complainant’s proprietary diagnostic systems are offered only to its authorized dealers and/or other permitted parties, such as independent qualified repair centers who pay for access. These diagnostic tools include diagnostic software and are offered under the BMW mark and additional marks and names, including E- SYS and INPA, among others. Authorized dealers and/or other permitted parties only, have the right to use the BMW diagnostic software and may not reproduce, distribute or sell such software.

The Complainant has continuously used BMW as a trademark and service mark since 1917, and owns numerous registrations for the BMW mark and variations thereof in more than 140 countries around the world, for instance, in Germany (e.g. Registration No. 221388 for the mark BMW and Design, filed October 5, 1917 and issued on December 10, 1917) and the U.S. (e.g. Registration No. 611,710 for the mark BMW in block letters, first used in commerce in February 1949, filed on March 10, 1954 and issued on September 6, 1955).

The Respondent registered the Domain Name on October 27, 2016. According to the evidence provided by the Complainant the Domain Name resolves to a website offering an unauthorized version of Complainant’s software products. Not much more is known of the Respondent as he did not take part in these proceedings. 5. Parties’ Contentions A. Complainant

General

The Complainant has trademark rights in its BMW mark by virtue of its trademark registrations and also its common law rights acquired through use of the BMW mark since 1917. Its trademark rights long pre-date the Respondent’s registration of the Domain Name.

As a result of the longstanding naming traditions of the Complainant (as well as its authorized dealers around the world), those encountering domain names consisting of the BMW mark combined with additional terms will believe that the domain name and/or corresponding website is owned, operated, and/or authorized by the Complainant.

The Respondent uses the Domain Name for a commercial website that advertises and/or offers unauthorized, counterfeit versions of the Complainant’s diagnostic software products and which directly competes with BMW’s own offering of its genuine diagnostic products. In particular, the Respondent advertises “E-SYS” and “INPA” software, and provides downloads and/or links to download