SOURCE: WIPO Arbitration and Mediation Centre, 28 October 2018, No. D2018-2016, Bayerische Motoren Werke AG v. Domain Admin, Whois Privacy Corp., <bmw.com>

The decision rendered by the WIPO Arbitration and Mediation Centre illustrates the case of homographic infringements, that is to say where a Latin letter is replaced by a letter that is practically identical, from another alphabet, so that the difference is not immediately detectable by the web surfer, particularly on tablet computers and telephones.

In the case at hand, it is the famous BMW trademark (Bayerische Motoren Werke) that was targeted by the infringement. A third party had reserved the internationalised domain name <bmẉ.com> (<xn—bm-e3s.com>), that is to say, containing non-Latin characters.

This name was used to carry out phishing. When accessed on a mobile device it pointed to a web page displaying the official BMW logo and offering free BMW cars by means of a survey aimed to “phish” for consumers’ information (obtain such information fraudulently by usurping the identity of BMW).

When such a fraud occurs, it is strongly recommended, alongside the actions conducted in the first instance to have the contentious site closed down, to register an extra-judiciary UDRP type complaint to be able to take back control of the name.

In the case at hand, the grantee did not respond to the complaint registered, which is not surprising given the manifestly fraudulent nature of the situation described.

The expert naturally recognised the risk of confusion between the BMW trademark and the <bmẉ.com> domain name, recalling that the experts acknowledge that the internationalised domain names are the equivalent of their Punycode translation.

Similarly, without difficulty, the absence of a legitimate interest of the defendant as well as its bad faith have been acknowledged.

What should be retained from this decision is that when you own the rights to a trademark, it is essential to proceed to extensive surveillance of one’s brands on the Internet and particularly of the corporate trademark (which corresponds to the company’s business name or trading name).

Surveillance of the trademark among non-Latin characters is desirable, among other things, in order to be able to detect any domain name that could be perceived as official by consumers and to act as quickly as possible against the most threatening names, i.e. those almost identical to the trademark.

Keywords: Non-Latin characters – IDN – Punycode – BMW – phishing – identity fraud