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Berkeley Square Trading Limited (trading as Bulgarian Dreams) v. Milen Yakimov
Case No. D2006-0497
1. The Parties
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.
Respondent is Milen Yakimov, Sofia, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <dreampropertiesbulgaria.com> is registered
with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 20, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On April 21, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 Respondent of the Complaint, and the proceedings commenced on April 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2006. Following receipt of a request from Respondent, the Center extended the Response due date to May 22, 2006. The Response was filed with the Center on May 22, 2006.
The Center appointed Knud Wallberg as the sole panelist
in this matter on May 31, 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,
4. Factual Background
Complainant has been trading under the name “Bulgarian Dreams” since 2003, and has during this time spent a considerable amount in promoting the name in various media including on the Internet. The Complainant specializes in providing services related to selling property in Bulgaria to the English-speaking market.
Complainant is the holder of a Community trade mark registration of the mark BULGARIAN DREAMS registered on November 12, 2004, for services in class 36, as well a UK trade mark registration of the same mark registered on August 13, 2004. Complainant further claims to have common law trade mark rights in the name as a consequence of the extensive use of the name.
Complainant has registered and is using the domain names <bulgariandreams.com> and <bulgariandreams.co.uk>.
In the Response, the Respondent has informed that
the domain name was registered on behalf of a client called “Dream Properties
Bulgaria” but no further information has been presented on this company.
The Respondent himself is employed with the Bulgarian company Magic Solutions
Ltd., which is a web development company.
5. Parties’ Contentions
Complainant claims that all the conditions set forth in the Policy Paragraph 4(a) are met.
The contested domain name <dreampropertiesbulgaria.com> should be regarded as confusingly similar to Complainant’s rights in the trade mark BULGARIAN DREAMS. The two distinctive elements of the contested domain name namely “dream” and “Bulgaria” only differ from Complainant’s mark by the letters “n” in Bulgaria and “s” in Dreams. Neither the reverse order of the words nor the addition of the descriptive term “properties” in the middle alters this assessment. In support of the claim of confusingly similarity reference is made to a number of previous decisions under the Policy.
As far as Respondent’s rights or legitimate interest in the domain name Complainant claims that Respondent does not have such demonstrable rights or interests. On the contrary Respondent has registered and started using the domain name long after Complainant started using the mark Bulgarian Dreams and with knowledge of Complainant and its activities and name. None of the criteria mentioned in the Policy Paragraph 4(c) can be met under such circumstances.
The fact that Complainant is one of the main developers of property in Bulgaria and had been on the market for two years prior to Respondent’s registration of the contested domain name and the establishment of the corresponding web site, means that it is inconceivable that Respondent was not aware of Complainant when he registered and started using the domain name. The bad faith requirement in the Policy Paragraph 4(a)(3) is thus also met.
As mentioned above under section 4, the Respondent has informed that the domain name was registered on behalf of a client called “Dream Properties Bulgaria” but no further information has been presented on this company.
The Registrant does not claim to have any personal
interest in the ownership of the contested domain name neither does he claim
to have any relationship to the website “www.dreampropertiesbulgaria.com”.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(2) that Respondent has no legitimate interests in respects of the domain name; and
(3) the domain name has been registered and used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant.
At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent claims that the domain name is registered on behalf of a client. This may be true but this does not alter the Respondent’s rights and obligations according to the Registration Agreement for the contested domain name. The Panel thus considers that it is the Respondent’s obligation to provide a substantive response if such a response is regarded necessary to defend the registration.
The lack of a substantive response in the case means that the Panel must base its decision on the factual information provided in the Complaint and the Panel’s own findings.
A. Identical or Confusingly Similar
The contested domain name consists of three elements that taken separately are descriptive namely “dream”, “properties” and “bulgaria”. Further the combination of the adjective “dream” and the noun “properties” must be regarded as a natural combination of words. The adjective “dream” can thus be used to describe something that is perfect and wonderful or something that is hoped or longed for such as “a dream vacation” or “a dream house” or indeed “a dream property”. The addition of the geographical term “bulgaria” just indicates that the domain name and corresponding website relates to dream properties that are located in Bulgaria.
The Panel further notes that the fact that Complainant has registered the trade mark BULGARIAN DREAMS does not mean that others, including Complainant’s competitors, are excluded from using the words contained in mark in a descriptive manner cf. art. 12(b) of Council Regulation (EC) No. 40/94 on the Community Trade Mark and the corresponding art. 6, 1(b) of the Trade Marks Directive.
It is true, as pointed out by Complainant, that there may be situations where the omission of single letters from a trade mark, the reversal of the orders of the word elements in a trade mark, or the addition of descriptive elements to a trade mark in a domain name nevertheless make the domain name confusingly similar to the trade mark for the purpose of proceedings under the Policy. However, based on the above finding that the domain name consists of a combination of generic words which form a phrase that is distinguishable from the Complainant’s trademark, the Panel cannot agree with Complainant that the contested domain name <dreampropertiesbulgaria.com> is confusingly similar to Complainant’s mark BULGARIAN DREAMS.
The Panel notes that this case is distinguishable from a similar case decided
under the Policy in relation to a complaint brought by the same Complainant
asserting rights in the same trademark, BULGARIAN DREAMS, (Berkeley Square
Trading Limited (trading as Bulgarian Dreams) v. Magdalena Ivanova, WIPO
Case No. D2005-1124 <bulgariandreamhome.com>) because of the nature
of the differences between the domain name in dispute in this case and the trademark
BULGARIAN DREAMS, as discussed above. The Panel further notes the view of the
panelist in Berkeley Square Trading Limited (trading as Bulgarian Dreams)
v. Bulgarian Property Dream Limited, WIPO
Case No. D2005-1149 <bulgarianpropertydream.com>, also brought by
the same Complainant asserting rights in the same trademark, who stated: “The
name Bulgarian Property Dream may be considered descriptive of the dream of
owning property in Bulgaria. The word ‘property’ adds a guiding
element which is not present in the trademark BULGARIAN DREAMS, which, as such,
may refer to any dream relating to Bulgaria. This creates a different impression,
making it uncertain whether the Trademark and the Domain Name are confusingly
similar. Since this is not decisive for the present case, as will be set out
below, the Panel will not elaborate this point.”
B. Rights or Legitimate Interests
Since the first element of the Policy Paragraph 4(a) is not met the Panel needs not address the additional requirements in detail. Although it follows from the above considerations that the contested domain must be considered to be of a descriptive nature and that Respondent therefore may have a legitimate interest in the registration of the domain name as such, the Panel wants to emphasize that it has not taken a final position on this.
C. Registered and Used in Bad Faith
Because of the above it is unnecessary to determine
whether Complainant has carried its burden of showing that the domain name was
registered and used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: June 14, 2006