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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Berkeley Square Trading Limited (trading as Bulgarian Dreams) v. Magdalena Ivanova

Case No. D2005-1214

 

1. The Parties

The Complainant is Berkeley Square Trading Limited (trading as Bulgarian Dreams), London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper Rudnick Gray Cary UK LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Magdalena Ivanova, London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <bulgariandreamhome.com> (the “Domain Name”) is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2005. On November 24, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On November 24, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2005.

The Center appointed Steven A. Maier as the sole panelist in this matter on January 3, 2006. 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.

Having reviewed the communications in the light of the Respondent’s non-response, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2 of the Rules to notify the Respondent of this Complaint. Under paragraph 14(a) of the Rules, where a party fails to comply with the time limits provided by the Rules, the Panel shall proceed to a decision on the Complaint in the absence of exceptional circumstances. The Panel is aware of no such circumstances in this case.

Under paragraph 14(b) of the Rules, where a Party, in the absence of exceptional circumstances, does not comply with any provision of or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

 

4. Factual Background

The Complainant is a private limited company registered in the UK.

The Complainant is the proprietor of the UK registered trade mark BULGARIAN DREAMS registered on August 13, 2004 in Class 36 for accommodation bureaux, apartment house management, renting of apartments, real estate appraisal, property brokerage, real estate agency services, real estate management, evaluation of property, housing agency services, leasing of real estate, rent collection, rental of offices and flats; information, advisory and consultancy services relating thereto.

The Complainant has applied for a Community Trade Mark in similar terms.

According to the evidence of the Complainant, which in the absence of a Response is not disputed, it has traded under the name “Bulgarian Dreams” since October 2003. It provides services related to selling and letting property in Bulgaria to the English-speaking market. Since that time it has operated websites linked to the domain names <bulgariandreams.com> and <bulgariandreams.co.uk> and is dependent upon the internet for 80% of its business.

The Complainant states that it is the leading company in its field with sales of over Euro 20m in 2005. It has won numerous awards. Since November 2003 it has spent over Ј324,000 in promoting its brand, much of which relates to exposure online and in particular to the search string “properties in Bulgaria”. A total of Ј261,000 has been spent with Google alone. The Complainant’s business has received widespread UK and international press coverage and publicity.

In addition, the Complainant provides quarterly property seminars under the BULGARIAN DREAMS mark and exhibits at numerous property trade shows. One such show regularly attracts between 15,000 and 25,000 visitors.

The Respondent registered the Domain Name on March 15, 2005.

From not later than June 1, 2005 until a time shortly before the date of the Complaint, the Respondent operated a website linked to the Domain Name. The website offered services relating to the sale and management of properties in Bulgaria to the English-speaking market under the name “Bulgarian Dream Home”.

The Complainant’s solicitors wrote to the Respondent on June 1, 2005, asserting that the Respondent was liable for trade mark infringement and passing off and demanding (among other remedies) the transfer of the Domain Name. The Respondent did not reply to the Complainant’s solicitors’ letter, but at some point after July 28, 2005, ceased to use the Domain Name to link to the website described above. Since that date the Domain Name has linked to an Internet service provider, UK2.net, and is advertised as being for sale.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to trade marks in which the Complainant has rights. In this regard, the Complainant relies on its UK registered trade mark, its CTM application and unregistered trade mark rights arising by virtue of the substantial goodwill it has generated in relation to the mark BULGARIAN DREAMS.

The Complainant submits that the Domain Name is identical to its mark but for the deletion of the letter “s”, which is of no material significance, and the addition of the word “home”. Since both the Complainant and the Respondent are involved in services relating to property, the addition of the word “home” is purely descriptive and does nothing to distinguish the Respondent’s business: on the contrary, it reinforces the likelihood of confusion.

The Complainant relies on Caterpillar Inc. –v- Roam the Planet, Ltd, WIPO Case No. D2000-0275 (domain name <catmachines.com>) and on Dr. Ing. h. c. F. Porsche AG –v- Vasily Terkin, WIPO Case No. D2003-0888 (domain name <porsche-autoparts.com>). In these cases, the respective panels found that the addition of the descriptive terms “machines” and “autoparts” as a suffix to the complainant’s trade mark was not sufficient to distinguish the business of the respondent.

The Complainant next submits that the Respondent has no rights or legitimate interest in the Domain Name.

The Complainant does not believe that the Respondent is able to demonstrate any of circumstances set out under paragraph 4(c) of the Policy that would evidence rights or a legitimate interest in the Domain Name.

The Complainant also contends that the Respondent must have been aware of the Complainant’s business and “Bulgarian Dreams” brand at the time she registered the Domain Name. Both the Complainant and the Respondent operate in the same market, which is specialised and has relatively few participants. The Respondent used the Domain Name to offer services that were identical to those of the Complainant. The Complainant’s brand had been very well known within the marketplace since 2003 and the Respondent registered the Domain Name as recently as March 2005.

The Complainant submits that, in the circumstances, the Respondent can only have registered the Domain Name in order to take unfair advantage of the association with the Complainant’s trademark. Accordingly, hers was not a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy. Knowingly to infringe a trade mark in offering goods and services cannot be a bona fide offering of goods and services under the Policy (Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum –v- M. Ohannessian, WIPO Case No. 2001-0879).

Nor, in the circumstances, is the Respondent making legitimate non-commercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert customers or tarnish the Complainant’s trademark.

Finally, the Complainant submits that the Domain Name was registered and has been used in bad faith.

In particular, the Complainant contends that the Respondent registered or used the Domain Name for the purpose of disrupting the business of a competitor and/or intentionally attempting, for commercial gain, to attract internet users to her website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the website and of services offered through it (paragraph 4(b)(iv) of the Policy). Where a mark is distinctive, bad faith will be found if it is unlikely that the Respondent selected the domain name without knowing of the reputation of the mark. The Complainant relies on Veuve Cliquot Ponsardin, Maison Fondee en 1772 –v- The Polygenix Group Co., WIPO Case No. D2000-0163 (domain name <veuvecliquot.org>) and upon Paule Ka –v- Paula Korenk, WIPO Case No. D2003-0453 (domain name <paulekacreations.com>). In the latter case the panel held that bad faith was established where the respondent registered and used a name that she knew to be a trade mark, without a legitimate interest and where confusion was likely to be caused, thereby allowing her to free-ride on the Complainant’s goodwill.

The Complainant also relies on the Respondent’s subsequent attempt to sell the Domain Name.

The Complainant seeks a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i)that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

 

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has a UK registered trade mark BULGARIAN DREAMS for services that include the sale and letting of property. The Panel also accepts that it has unregistered trade mark rights in that sign. The only question, therefore, is whether the Domain Name is identical or confusingly similar to the Complainant’s mark.

Plainly the domain name <bulgariandreamhome.com>, even ignoring the formal suffix, is not identical to the mark BULGARIAN DREAMS. As to whether the mark is confusingly similar, the case is not as straightforward as the Complainant contends. There is a distinction between the <catmachines.com> and <porsche-autoparts.com> cases and the present case, in that both the terms “Cat” (for machinery) and “Porsche” are inherently distinctive. In this case, all the component parts of both the Domain Name and the Complainant’s marks are highly generic and/or descriptive in nature.

In addition, in this case, the term “home” is not merely a descriptive addition to the mark BULGARIAN DREAMS (without the “S”). The term “dream home”, which forms part of the Domain name but not the Complainant’s mark, is an expression in common usage in its own right, albeit a descriptive one.

However, given that the Complainant has a UK registered trade mark for BULGARIAN DREAMS, which is registered for services that include those relating to property, and therefore “homes”, the Panel finds that a sufficient case has been made out to satisfy the first element required under paragraph 4(a) .

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which the Respondent may point to demonstrate a legitimate interest in the domain name in dispute. These are:

(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

In the absence of any Response, the Respondent has failed to make out any positive case under any of the above grounds.

In the light of the descriptive nature of the Complainant’s trade mark, this is not a case in which the Complainant could credibly submit that any domain name incorporating that mark must necessarily be infringing. Furthermore, on the available evidence, it is clear that the Respondent has used the Domain Name for the purposes of a business offering property services in Bulgaria. However, the Complainant’s submission in response to this is that the Respondent did so only in the knowledge of the Complainant’s trademark and with the intention of obtaining a free ride on the Complainant’s goodwill. The Complainant points to the fact that the Respondent was trading in the same, narrow and specialised, market in which the Complainant had been operating for the previous 18 months and had established a leading market position. She must therefore have known of the Complainant’s mark. In the circumstances, the Complainant contends, with the support of previous decisions under the Policy, that the Respondent’s use of the Domain Name to offer goods or services could not have been bona fide.

The Panel accepts that the Complainant’s submission in this regard gives rise to a prima facie case that the Respondent had no rights or legitimate interest in the Domain Name. In the absence of a Response or anything in the available evidence that would tend contradict the Complainant’s case, the Panel finds that the second element of the test under paragraph 4(a) is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In this case, as in many cases under the Policy, the considerations under the second and third limbs of the test under paragraph 4(b) are very closely related. In essence, the Complainant argues that the Respondent’s registration and use of the Domain Name, in the knowledge of the Complainant’s mark and for identical services, must have been with the intention of creating confusion and taking unfair advantage of the Complainant’s goodwill.

The Panel does not accept that this case is on all fours with the <veuvecliquot.org> or <paulekacreations.com> cases: the trademarks in those cases were inherently distinctive whereas the Complainant’s mark is descriptive. Nevertheless, the Panel accepts that, in view of her operating in the same narrow and specialised market in which the Complainant had been operating for the previous 18 months, it is reasonable to infer that the Respondent was likely to have known of the Complainant’s trade mark and business at the time she registered and used the Domain Name.

In the circumstances, and in the light of the fact that the Respondent has not presented any evidence to contradict the Complainant’s assertion of bad faith, the Panel finds that the third element of the test under paragraph 4(a) is also satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bulgariandreamhome.com> be transferred to the Complainant.


Steven A. Maier
Sole Panelist

Date: January 11, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1214.html

 

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