WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayerische Motoren Werke AG v. DomainsByP / Sharjeel Hussaini, MB Navigation Updates Case No. D2018-2846 1. The Parties

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

Respondent is DomainsByP of Scottsdale, Arizona, United States / Sharjeel Hussaini, MB Navigation Updates of Toronto, Ontario, Canada, self-represented. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 17, 2018.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2018. On December 19, 2018, the Center received an email communication from Respondent. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. On January 9, 2019, the Center sent an email communication inviting the Parties to explore settlement negotiations. On January 17, 2019, noting Complainant had not responded to the Center’s email communication of January 9, 2019, the Center informed the Parties it would proceed to panel appointment. Respondent submitted a request for suspension of the proceeding on January 17, 2019, to which the Center on January 18, 2019 invited Complainant to submit its comments. No further communication from Complainant was received by the Center. On January 23, 2019, the Center emailed the Parties indicating it would initiate the panel appointment process. That same day, the Center received an email communication from Respondent.

The Center appointed Marina Perraki as the sole panelist in this matter on January 25, 2019. 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

According to the Complaint, Complainant is one of the most successful manufacturers of automobiles and motorcycles in the world. It manufactures, sells, and distributes automobiles and motorcycles under the BMW trademark and provides various services. Complainant’s products and components are manufactured at 30 sites in 14 countries. In each year from 2011 through 2017, Complainant produced and sold more than 1,300,000 automobiles and more than 100,000 motorcycles. In 2017, Complainant had worldwide sales and revenue in excess of EUR 98 billion. According to the Complaint, the BMW mark has been in use since 1917 and enjoys fame and recognition worldwide as a result of extensive use and advertising.

Complainant offers also navigation software and systems under the BMW mark. It also offers navigation software updates and activation codes for such updates, known as FSC codes, through its authorized dealers and on its “” website, among other official channels.

Complainant is the owner of numerous BMW trademark registrations. These include:

- German Registration No. 221388 for BMW and Design, filed on October 5, 1917, registered on December 10, 1917, covering products in International Classes 12, 7, 8, 9, and 11, including automobiles and related parts and accessories.

- United States Registration No. 611,710 for BMW in block letters, first used in commerce February 1949, filed on March 10, 1954, registered on September 6, 1955, covering automobiles and motorcycles in International Class 12.

The Domain Name was registered on September 27, 2017 and resolves to a website (the “Website”), which, per the Complaint, advertises and offers unauthorized, counterfeit versions of Complainant’s navigation software and activation/FSC codes. The Website displays an altered version of Complainant’s BMW logo next to the words “BMW Nav Update”. It also displays unauthorized copies of Complainant’s copyright protected publicity image, which Complainant makes available only to the press and media for use in media coverage. Further, per the Complaint, the Website depicts Complainant’s BMW logo on an unauthorized, counterfeit USB stick on which the unauthorized software is provided. Lastly, it displays unauthorized copies of Complainant’s images from Complainant’s Configurator (or Build Your Own) tool found on Complainant’s “” and “” websites. 5. Parties’ Contentions A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent

Respondent did not submit a substantive reply to Complainant’s contentions. However, the Panel notes Respondent did contact the Center and Complainant on several occasions expressing a willingness to explore settlement negotiations. 6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly sim