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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Berkeley Square Trading Limited v. Bulgarian Dream Properties and Desislava Dimitrova

Case No. D2006-1041

 

1. The Parties

The Complainant is Berkeley Square Trading Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Piper Rudnick, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bulgarian Dream Properties and Desislava Dimitrova, Pleven, Bulgaria.

 

2. The Domain Name and Registrar

The disputed domain name <bulgariandreamproperties.info> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2006. On August 17, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 21, 2006, 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, 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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2006. The Respondent did not submit any response. Accordingly, the Center formally notified the Respondent’s default on September 21, 2006.

The Center appointed Mr. Desmond J. Ryan as the sole panelist in this matter on September 26, 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.

 

4. Factual Background

Absent a response, the only facts available to the Panel in this case are those provided by Complainant. Those facts are uncontroverted, moreover the Panel finds that Complainant’s factual statements are well documented and supported by extraneous evidence. The Panel therefore accepts the facts stated by Complainant as follows:

- Complainant is the owner of Community Trade Mark Registration No. 4131173 and UK Registration No. 2370664, “Bulgarian Dreams” registered in Class 36 for services including property brokerage and real estate agency services.

- Complainant has operated a real estate agency and brokerage service specializing in property sales in Bulgaria since October, 2003. It has affected substantial sales to the estimated value of over €70 million and it estimates that 80% of those sales have been generated through Complainant’s websites at <bulgariandreams.com> and <bulgariandreams.co.uk>. It has extensively advertised its services under or by reference to its “Bulgarian Dreams” trademarks. Its expenditure with Google in publicity has been over Ј600,000 with further press and print media advertising to an estimated cost of over Ј300,000 from January 2005 to July, 2006. Its activities have achieved substantial press coverage not only in the United Kingdom but also in Ireland, the United States of America and Bulgaria. Complainant claims that as a result of its substantive sales and promotion it has also acquired common law rights in the name “Bulgarian Dreams” and has achieved a reputation which, it says, must have been known to Respondent. It claims to be the leading operator in the Bulgarian property market in the United Kingdom and has received several awards for its work.

- The domain name was registered on December 12, 2005. Complainant became aware of Respondent’s activities on June 27, 2006. At that time the domain name resolved to a website page headed “Bulgarian Dream Properties” offering for sale, inter alia, properties at various locations in Bulgaria and giving UK telephone number contacts for Nora Narcheva and Michael Allistone.

- On June 29, 2006, Complaintant sent pre-action letters to Respondent and to the two UK contacts asserting, and providing evidence of, its rights in the trade mark “Bulgarian Dreams” and seeking transfer of the domain name and appropriate undertakings. No reply was received from any of the addressees of the pre-action letters. When Complainant re-visited Respondent’s website on July 27, 2006, the names of the two UK contacts had been removed, but the site was otherwise still operative in substantially the same form as it had been previously.

 

5. Parties Contentions

A. Complainant

Complainant contends that although the domain name is not identical to its “Bulgarian Dreams” trade mark it is clearly confusingly similar, the only differences being the deletion of the letter “s” from the word “Dreams” and the addition of the word “properties”, a word aptly descriptive of the services offered by both Complainant and Respondent. Complainant cites in support of its contentions WIPO Cases No. D2000-0275, Caterpillar Inc. v. Roam the Planet Ltd. and WIPO Case No. D2005-0032, Weld Racing, Inc. v. Modern Empire Internet Limited, and several other cases. In addition Complainant cites the decision in WIPO Case No. D2005-1214, a case in which it was also Complainant and concerning a substantially similar domain name, i.e., <bulgariandreamhomes.com>.

Complainant further contends that the fact of its extensive reputation in the name “Bulgarian Dreams”, that Respondent and commenced to operate and register and use the confusingly similar domain name at least two years after the commencement of Complainant’s extensive use and one year after its registration as UK and Community trademarks, has the consequences that the domain name cannot be used by the Respondent in connection with the bona fide offering of goods and services. It contends that Respondent chose the domain name for no reason other than its association with the Complainant’s trade mark. Complainant cites WIPO Case No. D2001-0879, Van Gogh Museum Enterprises BV & Anor v. M. Ohannesson, where the Panel held that “although the Respondent certainly was carrying on his business before he received notification of this dispute, the Panel believes the Respondents offering of goods and services was not bona fide as required by the policy. This is so because the Respondent, in the Panel’s view, was well aware his website evoked to the public the Complainant’s world famous museum in Amsterdam”.

Finally, Complainant submits that Respondent, by using the domain name for identical services to those supplied by the Complainant, registered and used the domain name in bad faith for the purpose of disrupting Complainant’s business and/or intentionally to attract Internet users to the website for commercial gain by creating a likelihood of confusion as to the source, affiliation or endorsement of the website and the services offered through it. Respondent again refers to WIPO Case No. D2005-0124 where the learned Panelist found that, “in view of [the Respondent] operating in the same narrow and specialized 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 Complainant’s trade mark and business at the time she registered and used the domain name”. Complainant contends that the present case is on all fours with its earlier case save that here Complainant’s reputation is further enhanced because it has been operating for nine months longer and it now has by the benefit of UK and Community trade mark registrations.

B. Respondent

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

 

6. Discussion and Findings

In order to succeed in its complaint, Complainant must show each of the following circumstances:

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

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

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

A. Identical or Confusingly Similar

The Panel accepts Complainant’s contention that the domain name is confusingly similar with its “Bulgarian Dreams” trademark. Certainly, Complainant’s mark carries with it a laudatory or semi descriptive connotation as to the attractiveness of the properties which it is promoting. The domain name likewise carries such connotations. However, the facts of Complainant’s trade mark registrations and the very extensive reputation which Complainant appears to have established in its mark, puts beyond doubt that Complainant has rights in “Bulgarian Dreams” as a trade mark. The question is therefore whether the omission of the letter “s” and the addition of the word “properties” sufficiently removes the domain name from the trade mark that it is not confusingly similar. In the Panel’s view, it does not. The omission of the letter “s” makes no difference whatsoever to the impression evoked by the words “Bulgarian Dream”. The addition of the word “properties”, a word apt to describe the very services which both parties are offering in competition, cannot serve to distinguish the name from the mark, indeed the opposite in the case. It tends only to reinforce the likelihood that a person knowing the services offered by the Complainant would assume that the domain name is associated with Complainant’s such services.

The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

On Complainant’s evidence, the Respondent registered and commenced use of the domain name before any notice to it from the Complainant as to its rights in the BULGARIAN DREAMS mark. That, however, is not sufficient to establish a right to legitimate interest in the Respondent. To come within the provisions of paragraph 4(c)(1) of the Policy, it is necessary that Respondent’s use of the domain name has been in respect of the bona fide offering of goods or services. Faced with the substantial reputation established by Complainant, Complainant’s trade mark registrations and the narrow field in which both parties operate in competition with one another, it cannot be said, absent special circumstances, that Respondent’s use of the domain name has been in connection with the bona fide offering of its services. Respondent had the opportunity to attempt to establish bona fide. It chose not to.

The Panel finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Respondent’s registration and use, in respect of the same services, of a domain name so closely resembling the well-known and established trade mark of a competitor cannot, on the face of it, be explained otherwise than to trade on Complainant’s reputation. Absent rebuttal by Respondent, the reasonable presumption is that there was an intention on the part of the Respondent to attract customer’s to its website for commercial gain by creating confusion with the Complainant’s mark and in so doing to disrupt the business of its competitor.

The Panel accepts Complainant’s contention with respect to paragraph 4(a)(iii) of the Policy and finds that Respondent registered and used the domain name in bad faith.

 

7. Decision

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

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Desmond J Ryan A M
Sole Panelist

Dated: October 19, 2006