WIPO Arbitration and Mediation Center
Berkeley Square Trading Limited v. Bulgarian Dream Properties/Diana Filipova
Case No. D2007-0164
1. The Parties
The Complainant is Berkeley Square Trading Limited, London United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Bulgarian Dream Properties/Diana Filipova, Sofia, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <bulgariandreamproperties.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2007. On February 7, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 8, 2007, eNom 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. 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 February 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2007.
The Center appointed Peter G. Nitter as the sole panelist in this matter on March 21, 2007. 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 Complainant is a private company which specializes in providing services related to selling property in Bulgaria to the English-speaking market. The Complainant trades under the name Bulgarian Dreams and registered the domain names <bulgariandreams.com> and <bulgariandreams.co.uk> on September 14, 2003. Over 80% of all of the Complainant’s property sales are generated through the Complainant’s websites.
The Complainant is the proprietor of a European Community Trade Mark registration for the word mark BULGARIAN DREAMS for services in class 36, including property brokerage and real estate agency services. The trademark was registered on November 12, 2004, as specified in Annex I in the Complaint. Further, the Complainant has a UK trademark registration for the words BULGARIAN DREAMS, registered on August 13, 2004. Complainant has made extensive use, promotion and advertising of the BULGARIAN DREAMS trademark.
It is also stated by the Panelists in Berkeley Square Trading Limited (trading as Bulgarian Dreams) v. Magdalena Ivanova, WIPO Case No. D2005-1214 and Berkeley Square Trading Limited v. Bulgarian Dream Properties and Desislava Dimitrova, WIPO Case No. D2006-1041 that the Complainant has an unregistered trademark consisting of the words “Bulgarian Dreams”. The panelist stated in WIPO Case No. D2006-1041 that “the facts of Complainant’s trademark 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 trademark”.
The disputed domain name was registered on November 9, 2004. The domain name leads to a website which offers (or purports to offer) services related to the sale of property in Bulgaria to the English-speaking market, under the name “Bulgarian Dream Properties”.
The Complainant sent a pre-action letter to the then registrant, on August 15, 2006. The letter stated the Complainant’s concern that this registrant is infringing the Complainant’s trademarks, committing the tort of passing off and, expressly reserved the right to institute the appropriate domain name dispute resolution procedure if the registrant did not apparently take the action requested. The Complainant received a fax with the reply that the website was “made just with marketing research and is absolutely not functioning”. The fax appears to be from a Penka Tascheva, sent from the Respondents fax number. Penka Tascheva further stated that they do not agree that the domain name is very similar, and that the differences are material.
At some point since August 1, 2006, the registrant of the domain name was changed to the Respondent, on behalf of a business claiming to use the name Bulgarian Dream Properties.
5. Parties’ Contentions
The Complainant submits that the domain name is confusingly similar to the trademark in which the Complainant has rights. The only differences between the domain name and the Complainant’s BULGARIAN DREAMS trademark are the deletion of the “s” from the end of the word “dreams” and the addition of the word “properties” as a suffix to the phrase BULGARIAN DREAMS. Since both the Complainant and the Respondent are involved in services relating to property, the addition of the word “properties” is purely descriptive and does nothing to distinguish the Respondent’s business: on the contrary, it reinforces the likelihood of confusion. The distinctive parts of the Complainant’s BULGARIAN DREAMS trademark are reproduced in the domain name.
The Complainant relies on Catepillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 and on Dr. Ing. h. .c. F Porche AG v. Vasily Terkin, WIPO Case No. D2003-0888. In these cases the respective Panels found that the addition of the descriptive terms “machines” and “autoparts” as a suffix to the complainant’s trademark was not sufficient to distinguish the business of the respondent. The Complainant further cites the Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0032 to support its contentions fact that a deletion of the letter “s” at the end of the word “dreams” does nothing to prevent confusion between the Complainant’s trademark and the domain name. In addition the Complainant cites the decision in Berkeley Square Trading Limited v. Bulgarian Dream Properties and Desislava Dimitrova, WIPO Case No. D2006-1041 a case in which it was also complainant and concerning a substantially similar domain name, i.e., <bulgariandreamproperties.info>.
The Complainant further contends that the Respondent can not demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of paragraph 4(c) of the Policy.
The Complainant contends that the Respondent must have been aware of the Complainant’s trademark. Both the Complainant and the Respondent operate in the same market, which is specialized and has relatively few participants. The Respondent uses the domain name to offer services that are identical to those of the Complainant. The Complainant’s brand has become well-known within the market since 2003, and the Respondent registered the domain name over a year after the Complainant started using its trademark.
The Complainant submits that under these 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, it is not used in connection with a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the Policy. To support its contentions, Complainant cites the Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879.
In view of the above mentioned facts, the Complainant further submits that the Respondent is not making a legitimate non-commercial or a fair use of the domain name.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith.
In particular, the Complainant contends that the Respondent registered and 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 its 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 Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163, Berkeley Square Trading Limited v. Magdalena Ivanova, WIPO Case No. D2005-1214, Berkeley Square Trading Limited v. Desislava Dimitrova, WIPO Case No. D2006-1041, and Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In the latter case, the panel held that bad faith was established where the respondent registered and used the domain name that she knew was a trademark, without legitimate interests and where confusion was likely to be caused, thereby allowing her to free-ride on the Complainant’s goodwill.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has registered and unregistered rights in the trademark BULGARIAN DREAMS for services that include the sale and letting of property. The question is therefore whether the domain name is identical or confusingly similar to the Complainant’s mark.
Plainly the domain name <bulgariandreamproperties.com>, even ignoring the top level domain denominator, is not identical to the mark BULGARIAN DREAMS. The Panel, however, accepts the Complainant’s contention that the domain name is confusingly similar with its trademark. The omission of the letter “s” and the addition of the word “properties” do not sufficiently remove the similarity with the trademark to be considered to not be confusingly similar. The omission of the letter “s” makes no difference to the impression evoked by the words “Bulgarian Dream”, and the addition of the word “properties” only tends to reinforce the likelihood that a person knowing the services offered by the Complainant would assume that the domain name is associated with Complainant. Reference is made to Berkeley Square Trading Limited v. Desislava Dimitrova, WIPO Case No. D2006-1041.
The Panel finds that the domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel has considered the allegation made by Complainant that the Respondent lacks any rights or legitimate interest in the contested domain name. The Respondent is in default, and has therefore not contested these allegations.
As it is generally difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in the contested domain name at issue and on the other hand, it would be fairly simple for the respondent to demonstrate that it has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for the complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
On the basis of the available evidence, it appears that the Respondent uses (or purports to use) the domain name for the purpose of being a business offering property services in Bulgaria. That is, however, not sufficient to establish a right or a legitimate interest in the domain name. Faced with the substantial reputation and goodwill established by Complainant, Complainant’s trademark registrations and rights, and the narrow field in which both parties operate in competition with one and another, the Panel finds that Respondent’s use of the domain name has not been in connection with the bona fide offering of its services.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists as one of the situations which demonstrate bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or services on its website.
The Complainant contends that the Respondent’s registration and use of the domain name, seemingly made with the knowledge of the Complainant’s services and trademark, was based on an intention to create confusion and taking unfair advantage of the Complainant’s goodwill.
As the panel stated in the very similar Berkeley Square Trading Limited v. Desislava Dimitrova, WIPO Case No. D2006-1041, (domain name <bulgariandreamproperties.info>):
“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 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.”
On the background of the above, the Panel finds that Respondent has registered and is using the domain name in bad faith.
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, <bulgariandreamproperties.com> be transferred to the Complainant.
Peter G. Nitter
Dated: April 4, 2007