Only when looking closely it does become apparent that the "ẉ" in the domain name actually has a dot and is not the domain "bmw.com" at all. This is a so-called IDN (Internationalized Domain Name). These are domains that contain mutated vowels, diacritical characters or letters from other alphabets. In Germany, for example, these are domains with an ä, ö or ü. However, there are many other characters, such as the "ẉ" - and with such characters there is also the danger of confusion. Our first question was why the Bayerische Motoren Werke (BMW) did not register the .com domain name. At this point we can reassure you: the domain "bmw.com" is of course part of the portfolio of the group, the counterpart "bmẉ.com" not yet.
The disputed domain was registered on May 22nd, 2018. The automobile manufacturer from Bavaria filed a complaint with WIPO (World Intellectual Property Organization) in September and demands the transfer of the IDN domain bmẉ.com. BMW is one of the most successful automobile and motorcycle manufacturers in the world and owns various brands (e.g. "BMW" from 1929) and domains ("bmw.com" or "bmwgroup.com" as an example). At the time of the complaint, the domain "bmẉ.com" referred to a website that displays the BMW logo and offers free BMW cars through a consumer information survey.
The complainant explains that the disputed domain is confusingly similar to her domain and that the "w" contains a dot. Furthermore, the respondent has neither the right nor a legitimate interest in the disputed domain. It also claims that the respondent has maliciously registered the domain and used it just as maliciously. In its reasoning, it states that the trademark is unmistakable and internationally known and that Internet users should be attracted because of the risk of confusion.
The respondent has not submitted any comments.
WIPO agrees that the domain is confusingly similar to the complainant's trademark and points out that the replacement of an ASCII letter (American Standard Code for Information Interchange) by a non-ASCII character does not prevent a confusing similarity between a domain name and a trademark from being established. Furthermore, the apparent case presented is sufficient to transfer the burden of proof to the respondent. However, the defendant has not submitted any evidence of rights or a legitimate interest. In addition, WIPO notes that the complainant is likely to have knowledge of the complainant and has deliberately maliciously registered the domain name. WIPO interprets the use of the complainant's logo and the false offer of free BMWs on the website to the domain as use of the disputed domain with malicious intent. For these reasons, it decides in favour of BMW and orders the transfer of the domain "bmẉ.com".
The complete decision can be found on the WIPO website. At the present time (11/12/2018), the domain has not yet been transferred, but has been given a special status by the registry.
This case shows once more, which possibilities there are to clone known domain names of established brands and how image losses can result from free riders. The average Internet user will usually not notice that the disputed domain was not an official BMW sweepstake.
Brands and well-known companies will never be able to prevent something like this from happening. But they can take various precautions to make day-to-day business more difficult for fraudsters. We therefore strongly recommend companies to protect their main domains sufficiently and to monitor similar domains regularly.
Sources: denic.de, wipo.int, bmw.com