WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berkeley Square Trading Limited (trading as Bulgarian Dreams) v. Bulgarian Property Dream Limited
Case No. D2005-1149
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 Bulgarian Property Dream Limited, Varna, Bulgaria, represented by Sabev and Partners Law Firm, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <bulgarianpropertydream.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 7, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 7, 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, 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 November 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2005. The Response was filed with the Center on December 9, 2005.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 21, 2005. 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
The following facts have been established by the Panel on the basis of the documentation as not or insufficiently contested by the other Party.
On September 14, 2003, Complainant registered the domain names <bulgariandreams.com> and <bulgariandreams.co.uk>. Complainant has operated a website under <bulgariandreams.com> since October 29, 2003. Complainant started trading under the name ‘Bulgarian Dreams’ in late October 2003. Complainant provides services relating to the selling and letting of property in Bulgaria to the English-speaking market.
As of November 22, 2003, Complainant took out ad-words with Google relating to property in Bulgaria. When such an ad-word is typed in the Google search engine, an advertisement for the services of Complainant will appear at the top of the page on which the search results are displayed.
As of February 15, 2004, the services of Complainant have been the subject of press reports. As of February 23, 2004, Complainant has advertised its services in various newspapers and magazines distributed in the United Kingdom, Ireland and other countries.
On August 13, 2004, Complainant applied for the UK trademark BULGARIAN DREAMS, for which a Registration Certificate was issued on January 14, 2005. The application was published in the Trademarks Journal on October 1, 2004 and the registration of the trademark was published on February 11, 2005.
Claiming the priority date of the UK registration, Complainant filed an application for a Community Trademark on November 12, 2004, which is still pending.
Respondent is a company located in Varnia, Bulgaria, and was established on February 2, 2004. Respondent is a family-run business founded by an ex-British army W.Officer (W.O. 1) and his wife. The company was registered with the Varnia District Court and entered into the Register of Commercial Companies on February 13, 2004.
Respondent began doing business in the course of February 2004. The Domain Name was registered by Respondent on March 4, 2004.
The first contact between the parties took place on or about May 18, 2005. On that date Mr. Jenkin of Complainant telephoned Ms Brown of Affordable Homes Abroad, UK representative for Respondent. Subsequently, Mr Helson, Managing Director of Respondent, called Mr. Jenkin.
On June 1, 2005 Complainant’s lawyers sent a pre-action letter to Respondent, Ms. Brown, and several others, advising that in their view use of the domain name <bulgarianpropertydream.com> would be, inter alia, an infringement of Complainant’s trademark rights. Respondent did not reply to this letter.
On June 1, 2005, Complainant’s solicitors sent a second letter to Respondent in which an offer was made for the transfer of the Domain Name to Complainant for the amount of GBP500. Respondent did not reply to this letter.
On November 7, 2005, Complainant filed the Complaint.
5. Parties’ Contentions
Complainant submits that it is the leading company providing services relating to the selling and letting of property in Bulgaria to the English-speaking market, having achieved over € 20 million in property sales in 2004 and having been given various awards in relation to its services in 2004 and 2005.
Complainant submits that it has spent considerable time and money promoting its business, inter alia, more than his earlier GBP 300,000 on promoting its brand through advertising, public relations and exhibitions, and an amount of more than GBP 260,000 for advertisements with the Google search engine.
Complainant relies on its registered UK trademark and its CTM application.
Complainant submits that by reason of extensive use, promotion and advertising of the BULGARIAN DREAMS trademark it is the proprietor of substantial goodwill in the trademark in its field of services.
Complainant also relies on an unregistered (or common law) trademark consisting of the words ‘Bulgarian Dreams’ by virtue of its goodwill in the field of providing services relating to the selling and letting of property in Bulgaria to the English-speaking market.
Complainant submits that its trademark BULGARIAN DREAMS and the domain name <bulgarianpropertydream.com> are confusingly similar, as according to Complainant the deletion of the ‘s’ is of little significance, the word ‘property’ is purely descriptive and does nothing to distinguish Respondent’s business, and the distinctive part of Complainant’s trademark (BULGARIAN and DREAMS) are reproduced in the Domain Name.
Complainant submits that Respondent cannot demonstrate any circumstances that would evidence a right to or a legitimate interest in the Domain Name, since, according to Complainant, it is clear that Respondent chose the Domain Name for its association with Complainant’s trademark and that Respondent must have been aware of Complainant at the time of registration and its subsequent use of the domain name. This contention is based on Complainant’s submission that Complainant is very well-known within its market, as a market-leader with a significant reputation and goodwill, while Complainant and Respondent operate in the same specialized market which has relatively few participants.
In addition, Complainant submits that in the telephone conversation in May 2005 between Respondent’s Managing Director and Mr. Jenkin of Complainant, Respondent indicated being well aware of Complainant’s trademark and of Complainant’s efforts to protect its brand name prior to that conversation.
Complainant furthermore submits that Respondent has, by using the Domain Name for identical services to those supplied by Complainant, registered and used the Domain Name for the purpose of disrupting the business of its competitor (Complainant) and/or intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation, or endorsement of the website, and of services offered through the website.
Complainant bases this contention on its submission that, while its trademark is distinctive, bad faith is found if it is unlikely that Respondent would have selected the Domain Name without being aware of the reputation of Complainant’s trademark.
Respondent notes that the addresses of the Trademark owner and the applicant of the Community Trademark Application differ from Complainant’s address and concludes that Complainant has not firmly established its trademark rights.
Regarding the common law trademark rights claimed by Complainant, Respondent submits that no such rights have been acquired as Complainant has only performed its activities during a short period of time and has not proved its allegations concerning its market presence and popularity.
Furthermore, according to Respondent, the trademark BULGARIAN DREAMS is rather weak and there are many other entities with names, domains or websites containing the words ‘Bulgarian’, ‘property’ and/or ‘dreams’. All this taken together, according to Respondent, does not substantiate any common law trademark rights.
Respondent submits that the Domain Name is not identical or confusingly similar to Complainant’s trademark. Respondent submits that the trademark BULGARIAN DREAMS is not inherently distinctive as it consists of the words ‘Bulgarian’ which is an adjective referring to a geographical location, and the word ‘dreams’ which is a common word in the English language.
In contrast, according to Respondent, the phrase ‘Bulgarian Property Dream’ has a specific meaning i.e. dreaming of a property in Bulgaria.
Respondent submits that it has rights and legitimate interests in respect of the Domain Name, since it used and made demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods and services prior to receiving any notice of the dispute. In this context, Respondent submits that it has operated a website under the Domain Name as of March 2004 and that it was not aware of Complainant’s existence until the telephone conversation on or around May 18, 2005, between Mr. Jenkin of Complainant and Ms. Brown, and thereafter Respondent’s Managing Director. Respondent disputes that it was aware of Complainant’s trademark until it received the letter from Complainant’s solicitors dated June 1, 2005. Respondent disputes that the trademark was discussed in the May 18, 2005, telephone conversation with its Managing Director and denies that he acknowledged to have been aware of the trademark prior to that conversation.
Respondent submits that the Domain Name has not been registered in bad faith. In this context, Respondent submits that it was not aware of Complainant at the time it registered the Domain Name and it did not become aware of Complainant’s existence until the telephone conversation on May 18, 2005. Respondent did not reply to the letter of June 1, 2005, because after the telephone conversation with Mr. Jenkin it found further correspondence with Complainant pointless due to the unwillingness allegedly displayed by Complainant’s Managing Director in the telephone conversation on May 18, 2005, for normal communication.
According to Respondent, it never replied to the letter of June 1, 2005, from Complainant’s solicitors in which an offer was made to buy the Domain Name since it has no desire to sell, or otherwise part with the Domain Name.
Respondent further submits that it cannot be reasonably expected to have been aware of Complainant, since its directors and offices are domiciled in Varnia, Bulgaria and the market for real estate in Bulgaria is not specialized, whereas numerous real estate services are being offered both in Varnia and other Bulgarian towns, many thereof claiming to be ‘British run’ or ‘with British support’.
Respondent submits that, since it was not aware of Complainant at the time that it registered the Domain Name on March 4, 2004, it could not have registered the Domain Name in order to disrupt Complainant’s business. Respondent has chosen the Domain Name because it is identical to its company name and leaves no doubt among its clients as to whom they are dealing with, and because it describes the type of services offered by Respondent and their location.
Respondent contests that Complainant could have become well-known for its brand in the course of its use during a period of less than four months prior to the registration date of the Domain Name. Furthermore, according to Respondent, Complainant and Respondent are not direct competitors given the broadness of the real estate field of business. Complainant offers for sale new developments, most of which do not exist at the time of offer, using its website to generate 80% of its sales. The majority of Respondent’s sales concern existing property and are generated by its offices in Varnia, Bulgaria by clients visiting the offices and the property they are interested in.
Respondent contests that Complainant is the market leader in the provision of services relating to the selling and letting of property in Bulgaria to the English-speaking market and submits that no evidence has been provided by Complainant of its sales volume. Respondent further submits that many of the properties offered for sale on Complainant’s website still have to be built and that it is not possible in Bulgaria to sell an apartment until it is under construction. Respondent therefore doubts that the amount of sales mentioned by Complainant represent actual turnover. Furthermore, according to Respondent, the awards cited by Complainant are based on information supplied by participants, and not on their reputation among clients.
Respondent also submits that Complainant has failed to explain how a likelihood of confusion may occur or how Respondent may have contributed to it, since, according to Respondent, it has made every effort to distinguish itself from competitors by way of website design, clear disclosure of its identity and contacts.
Respondent concludes that it registered the Domain Name in good faith and without any knowledge of Complainant and that the Complaint should be dismissed.
Respondent further submits that the conduct of Complainant and the sequence of events indicate that the Complaint was brought by the Complainant in bad faith, in an attempt at Reverse Domain Name Hijacking. According to Respondent, the Complaint was filed by Complainant in full knowledge of the fact that Respondent is a Bulgarian entity and that its business name is identical to the Domain Name, which was registered before the registration of the Trademark.
According to Respondent, Complainant was fully aware of the weakness in terms of the distinctiveness and popularity of the Trademark.
On this basis, Respondent requests the Panel to declare in its Decision that the Complaint was filed in bad faith and constitutes an abuse of the administrative proceedings.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has proven that it has unregistered trademark rights since the evidence provided (advertisements, press coverage, awards granted) show that the name Bulgarian Dreams has become a distinctive identifier associated with the Complainant or its goods and services. (see inter alia Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 <crux.net>, Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 <backgroundfacts.com>, Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786 <austrade.com> and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 <idealeague.com> among others). However, Complainant has not provided evidence that such unregistered trademark rights already existed on or before the date of registration of the Domain Name, since almost all the relevant evidence relates to the period thereafter. This in itself does not prevent a finding of confusing similarity (see inter alia Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 <digitalvision.com> and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 <svenskaspel.com>).
The Trademark BULGARIAN DREAMS is distinctive for the services for which it has been registered, since BULGARIAN DREAMS is not descriptive of services such as property brokerage and real estate agency services. Although the Trademark has not been registered until August 10, 2004 (more than five months after the registration of the Domain Name) this does not prevent a finding of confusing similarity.
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
The Panel finds that Respondent has a right or legitimate interest in the Domain Name. Respondent has demonstrated that it has used the Domain Name prior to the notice of the dispute to it in connection with the bona fide offering of goods and services.
Complainant has, in this context, submitted that Respondent must have been aware of its existence when it registered the Domain Name on March 4, 2004, and that Respondent chose the Domain Name because of its association with the Trademark, so that its offering of goods and services cannot have been bona fide.
However, in the opinion of the Panel, Complainant has failed to substantiate this claim.
As set out above, the Trademark was not registered until August 10, 2004 (five months after registration of the Domain Name), while it has been established that Complainant did not have unregistered trademark rights on the date of registration of the Domain Name, since the evidence provided by Complainant does not show that the name Bulgarian Dreams had already on or before March 4, 2004, become a distinctive identifier associated with the Complainant or its goods and services.
The evidence does show that Complainant began operating its website on October 29, 2003 and that it started to take out ad-words from Google as of November 22, 2003. However, these activities cover a period of only four months in which the Complainant used its name. Complainant has not submitted evidence on the amount of sales under the mark, the nature and extent of advertising, consumer surveys or number of hits on its website during that four month period. Furthermore, the media recognition in that period was limited to an advertising in the Manchester Evening News of February 23, 2004, and a press publication in the Sunday Independent (Ireland) of February 15, 2004.
This evidence does not support Complainant’s apparent claim that by the time Respondent registered its Domain Name on March 4, 2004,
Complainant had already become (well-) known in the relevant market, so that it should be assumed that Respondent was aware of Complainant’s existence. The fact that Respondent carries on its business from its office in Varnia, Bulgaria, selling to customers visiting the office and the property they are interested in, while Complainant works mainly from its office in London, catering primarily to the English-speaking market in the UK and Ireland, and achieving 80% of its sales through its website, indicates that they were (and possibly still are) in different segments of the market.
Therefore, there is insufficient evidence that Respondent knew of Complainant at the time of registration of the Domain Name. As Complainant’s submission that Respondent did not have a right or legitimate interest in the Domain Name rested on this submission, the Panel concludes that Complainant has not succeeded in providing the evidence required.
C. Registered and Used in Bad Faith
For completeness’ sake, the Panel will also briefly discuss Complainant’s submission that Respondent registered and used the Domain Name for the purpose of disrupting the business of its competitor (Complainant) and/or intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation, or endorsement of the website, and of services offered through the website.
This contention is based on Complainant’s submission that its trademark is distinctive and that it is unlikely that Respondent selected the Domain Name without being aware of the reputation of Complainant’s trademark. Leaving aside whether this contention, if proven, would be sufficient to conclude that Respondent registered and used the Domain Name in bad faith, Complainant has failed to provide evidence, as set out above, that Respondent was aware of Complainant when registering the Domain Name, let alone that Respondent chose the Domain Name to disrupt Complainant’s business.
Moreover, Complainant has not provided any evidence of such disruption.
Therefore, Complainant has not succeeded in providing the required evidence of bad faith registration and use of the Domain Name.
D. Reverse Domain Name Hijacking
In the Panel’s opinion, this is not a case of Reverse Domain Name Hijacking.
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (see, e.g., Goldline International, Inc.v. Gold Line, WIPO Case No. D2000-1151 <goldline.com>). In the Panel’s opinion, this is not a case of Reverse Domain Name Hijacking.
By choosing not to reply to Complainant’s pre-action letter of June 1, 2005, Respondent created the impression that it did not contest the allegations of Complainant’s solicitors, inter alia, that it was aware of Complainant when registering the Domain Name. Instead of providing the evidence, Respondent did not react at all, thereby depriving itself of the possibility to convince Complainant of its own right and legitimate interest and lack of bad faith in registering and using the Domain Name.
For all the foregoing reasons, the Complaint is denied and the Panel dismisses Respondent’s claim that Complainant engaged in Reverse Domain Name Hijacking.
Wolter Wefers Bettink
Date: January 11, 2005